Case C‑98/13

Martin Blomqvist

v

Rolex SA

and

Manufacture des Montres Rolex SA

(Request for a preliminary ruling from the Højesteret)

‛Reference for a preliminary ruling — Regulation No 1383/2003 — Measures to prevent counterfeit or pirated goods being placed on the market — Article 2 — Scope of the Regulation — Private sale by internet of a counterfeit watch from a non-member country to an individual residing in a Member State — Seizure of the watch by the customs authorities on entry into the territory of the Member State — Lawfulness of seizure — Conditions — Conditions relating to infringement of intellectual property rights — Directive 2001/29/EC — Article 4 — Distribution to the public — Directive 2008/95/EC — Article 5 — Regulation (EC) No 207/2009 — Article 9 — Use in the course of trade’

Summary — Judgment of the Court (Second Chamber), 6 February 2014

Approximation of laws — Trade marks — Interpretation of Regulation No 207/2009 and Directive 2008/95 — Right of the proprietor of a trade mark to prohibit a third party from using an identical sign in relation to identical products — Use of the trade mark within the meaning of Article 9 of the Regulation and Article 5 of the Directive — Meaning (Council Regulation No 207/2009, Art. 9(1); European Parliament and Council Directive 2008/95, Art. 5) Approximation of laws — Copyright and related rights — Directive 2001/29 — Harmonisation of certain aspects of copyright and related rights in the information society — Distribution to the public — Meaning (European Parliament and Council Directive 2001/29, Art. 4(1)) Common commercial policy — Measures to prevent counterfeit or pirated goods being placed on the market — Regulation No 1383/2003 — Counterfeit goods or pirated goods — Meaning — Goods brought into the customs territory of the European Union which are imitations of goods protected in the European Union — Included — Conditions — Goods intended to be put on sale in the European Union — Matters which may be taken as proof (Council Regulation No 1383/2003)

The proprietor of a trade mark is entitled, on the basis of Directive 2008/95 to approximate the laws of the Member States relating to trade marks and Regulation No 207/2009 on the Community trade mark, to prohibit a third party from using, without the proprietor’s consent, a sign identical with that trade mark when that use is in the course of trade, is in relation to goods or services which are identical with, or similar to, those for which that trade mark is registered, and affects, or is liable to affect, the functions of the trade mark. (see para. 27) Under Directive 2001/29 on the harmonisation of certain aspects of copyright and related rights in the information society, an exclusive right is conferred on authors to authorise or prohibit any form of distribution to the public by sale or otherwise of the original of their works or copies thereof. Distribution to the public is characterised by a series of acts going, at the very least, from the conclusion of a contract of sale to the performance thereof by delivery to a member of the public. A trader in such circumstances bears responsibility for any act carried out by him or on his behalf giving rise to a ‘distribution to the public’ in a Member State where the goods distributed are protected by copyright. Such distribution to the public must be considered proven where a contract of sale and dispatch has been concluded. (see paras 28, 29) 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 the holder of an intellectual property right over goods sold to a person residing in the territory of a Member State through an online sales website in a non-member country enjoys the protection afforded to that holder by that regulation at the time when those goods enter the territory of that Member State merely by virtue of the acquisition of those goods. It is not necessary, in addition, for the goods at issue to have been the subject, prior to the sale, of an offer for sale or advertising targeting consumers of that State. Thus, 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 can be classified as ‘counterfeit goods’ or ‘pirated goods’ where it is proven that they are intended to be put on sale in the European Union, such proof being provided, inter alia, where it turns out 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. (see paras 33, 35, operative part)

Case C‑98/13

Martin Blomqvist

v

Rolex SA

and

Manufacture des Montres Rolex SA

(Request for a preliminary ruling from the Højesteret)

‛Reference for a preliminary ruling — Regulation No 1383/2003 — Measures to prevent counterfeit or pirated goods being placed on the market — Article 2 — Scope of the Regulation — Private sale by internet of a counterfeit watch from a non-member country to an individual residing in a Member State — Seizure of the watch by the customs authorities on entry into the territory of the Member State — Lawfulness of seizure — Conditions — Conditions relating to infringement of intellectual property rights — Directive 2001/29/EC — Article 4 — Distribution to the public — Directive 2008/95/EC — Article 5 — Regulation (EC) No 207/2009 — Article 9 — Use in the course of trade’

Summary — Judgment of the Court (Second Chamber), 6 February 2014

Approximation of laws — Trade marks — Interpretation of Regulation No 207/2009 and Directive 2008/95 — Right of the proprietor of a trade mark to prohibit a third party from using an identical sign in relation to identical products — Use of the trade mark within the meaning of Article 9 of the Regulation and Article 5 of the Directive — Meaning (Council Regulation No 207/2009, Art. 9(1); European Parliament and Council Directive 2008/95, Art. 5) Approximation of laws — Copyright and related rights — Directive 2001/29 — Harmonisation of certain aspects of copyright and related rights in the information society — Distribution to the public — Meaning (European Parliament and Council Directive 2001/29, Art. 4(1)) Common commercial policy — Measures to prevent counterfeit or pirated goods being placed on the market — Regulation No 1383/2003 — Counterfeit goods or pirated goods — Meaning — Goods brought into the customs territory of the European Union which are imitations of goods protected in the European Union — Included — Conditions — Goods intended to be put on sale in the European Union — Matters which may be taken as proof (Council Regulation No 1383/2003)