Joined Cases C-446/09 and C-495/09

Koninklijke Philips Electronics NV

v

Lucheng Meijing Industrial Company Ltd and Others

and

Nokia Corporation

v

Her Majesty’s Commissioners of Revenue and Customs

(References for a preliminary ruling from the Rechtbank van eerste aanleg te Antwerpen and by the Court of Appeal (England and Wales) (Civil Division))

(Common commercial policy – Combating the entry into the European Union of counterfeit and pirated goods – Regulations (EC) No 3295/94 and No 1383/2003 – Customs warehousing and external transit of goods from non-member States which constitute imitations or copies of goods protected in the European Union by intellectual property rights – Action by the authorities of the Member States – Conditions)

Summary of the Judgment

1.        Common commercial policy – Measures to prevent the placing on the market of counterfeit or pirated goods – Regulations No 3295/94 and No 1383/2003 – Counterfeit goods or pirated goods – Definition

(Art. 131 EC; Art. 206 TFUE; Council Regulations No 3295/94 and No 1383/2003)

2.        Common commercial policy – Measures intended to prevent the placing on the market of counterfeit or pirated goods – Regulations No 3295/94 and No 1383/2003 – Goods brought into the customs territory of the European Union under a suspensive procedure and constituting an imitation of a product protected within the European Union – Action by the customs authorities – Conditions – Indications giving rise to suspicions of an infringement of intellectual property rights

(Council Regulations No 3295/94 and No 1383/2003)

1.        Regulation No 3295/94 laying down measures concerning the entry into the Community and the export and re‑export from the Community of goods infringing certain intellectual property rights, as amended by Regulation No 241/1999, and Regulation No 1383/2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights must be interpreted as meaning that:

– goods coming from a non-member State which are imitations of goods protected in the European Union by a trade mark right or copies of goods protected in the European Union by copyright, a related right or a design cannot be classified as ‘counterfeit goods’ or ‘pirated goods’ within the meaning of those regulations merely on the basis of the fact that they are brought into the customs territory of the European Union under a suspensive procedure;

– those goods may, on the other hand, infringe the right in question and therefore be classified as ‘counterfeit goods’ or ‘pirated goods’ if it is proved that they are intended to be put on sale in the European Union, such proof being provided, in particular, when it becomes apparent that the goods have been sold to a customer in the European Union or offered for sale or advertised to consumers in the European Union, or when it is made clear by documents or correspondence concerning the goods that their diversion to European Union consumers is envisaged;

Imitations and copies coming from a non-member State and transported to another non-member State may be compatible with the intellectual property provisions in force in each of those States. In the light of the common commercial policy’s main objective, set out in Article 131 EC and Article 206 TFEU and consisting in the development of world trade through the progressive abolition of restrictions on trade between States, it is essential that those goods be able to pass in transit, via the European Union, from one non-member State to another without that operation being hindered, even by a temporary detention, by Member States’ customs authorities. Precisely such hindrance would be created if Regulations No 3295/94 and No 1383/2003 were interpreted as permitting the detention of goods in transit without the slightest indication to suggest that they could be fraudulently diverted to European Union consumers.

(see paras 63, 78 operative part)

2.        Regulation No 3295/94 laying down measures concerning the entry into the Community and the export and re‑export from the Community of goods infringing certain intellectual property rights, as amended by Regulation No 241/1999, and Regulation No 1383/2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights must be interpreted as meaning that:

– in order that the authority competent to take a substantive decision may profitably examine whether such proof and the other elements constituting an infringement of the intellectual property right relied upon exist, the customs authority to which an application for action is made must, as soon as there are indications before it giving grounds for suspecting that such an infringement exists, suspend the release of or detain those goods; and

– those indications may include, in particular, the fact that the destination of the goods is not declared whereas the suspensive procedure requested requires such a declaration, the lack of precise or reliable information as to the identity or address of the manufacturer or consignor of the goods, a lack of cooperation with the customs authorities or the discovery of documents or correspondence concerning the goods in question suggesting that there is liable to be a diversion of those goods to European Union consumers.

(see para. 78, operative part)