Koninklijke Philips Electronics NV (C-446/09) v Lucheng Meijing Industrial Company Ltd and Others and Nokia Corporation (C-495/09) v Her Majesty’s Commissioners of Revenue and Customs.
Date: 2011-12-01
50. According to the definition of the terms ‘counterfeit goods’ and ‘pirated goods’ in Article 1(2) of Regulation No 3295/94 and Article 2(1) of Regulation No 1383/2003, they cover infringements of a trade mark, copyright, a related right or a design which applies pursuant to European Union legislation or pursuant to the domestic law of the Member State in which the application for action by the customs authorities is made. It follows that only infringements of intellectual property rights as conferred by European Union law and the national law of the Member States are covered.
55. As follows from Articles 91, 92 and 98 of the Customs Code, the transit and customs warehousing procedures are respectively characterised by the movement of goods between customs offices and the storage of goods in a warehouse under customs supervision. On any view, those operations cannot, as such, be regarded as the putting of goods on sale in the European Union (see, with regard to intra‑Community transit operations, Case C‑115/02 Rioglass and Transremar  [2003] ECR I‑12705, paragraph 27, and Montex Holdings , paragraph 19).
56. The Court has repeatedly deduced from that fact that goods placed under a suspensive customs procedure cannot, merely by the fact of being so placed, infringe intellectual property rights applicable in the European Union (see inter alia, as regards rights concerning designs, Case C‑23/99 Commission  v France  [2000] ECR I‑7653, paragraphs 42 and 43, and, as regards rights conferred by trade marks, Rioglass and Transremar , paragraph 27, Case C‑405/03 Class International  [2005] ECR I‑8735, paragraph 47, and Montex Holdings , paragraph 21).
57. On the other hand, those rights may be infringed where, during their placement under a suspensive procedure in the customs territory of the European Union, or even before their arrival in that territory, goods coming from non-member States are the subject of a commercial act directed at European Union consumers, such as a sale, offer for sale or advertising (see Class International , paragraph 61, and Case C‑324/09 L’Oréal and Others  [2011] ECR I‑0000, paragraph 67).
58. Having regard to the risk, previously pointed out by the Court in Case C‑383/98 Polo/Lauren  [2000] ECR I‑2519, paragraph 34, of fraudulent diversion to European Union consumers of goods warehoused in the customs territory of the European Union or transiting that territory, it must be stated that, in addition to the existence of a commercial act already directed to those consumers, other circumstances can also lead to temporary detention by the customs authorities of the Member States of imitations or copies which are declared under a suspensive procedure.
69. In the event that the judicial or other authority competent to take a substantive decision finds an infringement of the intellectual property right relied upon, the destruction or abandonment of the goods in question is the only customs-approved treatment which they can receive. That follows from Article 2 of Regulation No 3295/94 and Article 16 of Regulation No 1383/2003, read in conjunction with Article 4 of the Customs Code, while Articles 11 and 18 respectively of those regulations state, in addition, that effective and dissuasive penalties must be laid down for infringements found on the basis of those regulations. It is clear that the operators concerned cannot suffer such dispossession or penalties on the sole basis of a risk of fraud or on the basis of a fiction such as that proposed by Philips and the Belgian Government.
75. Nor is the combating of unlawful operations impeded by the fact, already found by the Court, that it is impossible for the holder of the intellectual property right to refer the case to the authority competent to take a substantive decision if the operators responsible for the presence of the goods in question in the customs territory of the European Union have conceded their identity (Case C‑223/98 Adidas  [1999] ECR I‑7081, paragraph 27). It must be borne in mind, in that regard, that European Union customs law establishes the principle that all goods intended to be placed under a customs procedure must be covered by a declaration (Case C‑138/10 DP grup  [2011] ECR I‑0000, paragraph 33). As is clear from Article 59 of the Customs Code and the implementing provisions of that code, a declaration which does not permit identification since the name or address of the declarant or other relevant operators is concealed will have the consequence that the release of the goods for the purposes provided for by the customs procedure requested cannot be validly granted. Moreover, if the lack of reliable information as to the identity or address of the operators responsible persists, the goods are liable, under Article 75 of the Customs Code, to be confiscated.
78. Having regard to all the foregoing considerations, the answer to the questions referred is that Regulations No 3295/94 and No 1383/2003 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’ 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, or where it is apparent from documents or correspondence concerning the goods that their diversion to European Union consumers is envisaged;
– 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, inter alia, 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.
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