report today, the final version of the plans includes a
significantly beefed-up provision to deal with goods-in
transit. In summary, it wants to enable trade mark holders to
prevent third parties from bringing into the EU goods bearing a
trade mark that is "essentially identical" to the registered
mark, regardless of whether or not those goods are released for
circulation in the EU.
phones being shipped via London were at the centre of a
landmark CJEU case
This is about the best result brand owners could have hoped
for, after the disappointment of the Philips and
Nokia cases and the failure to change previous
legislation, such as the Customs Regulation, and suggests that
the extensive lobbying that many trade mark groups engaged in
over the past two years has been effective.
It’s certainly a neat solution to the problem
of how to seize counterfeit goods that are being shipped via
the EU between two other countries: notably, by putting the
change into the trade marks legislation the Commission has
dodged concerns that other IP rights will be affected
(specifically, the shipment of generic pharmaceuticals).
However, I doubt it will be implemented as drafted as it raises
a number of problems.
First, there is the vagueness of that phrase "essentially
identical" – not just "identical". This seems to be
more than identical, but rather less than similar/likely to
confuse. If a counterfeiter is prepared to argue that their
sign is not essentially identical, that could make for some
interesting disputes. And would the same standard be applied to
non-traditional marks, such as shapes? What is "essentially
identical" to a Coke bottle?
Second, I expect that once critics of IP rights get to grips
with this proposal they will object that it is a considerable
extension of trade mark rights. And they will have a case: the
European Commission seems to be proposing that trade mark
owners can prevent the shipment of goods that infringe an EU
trade mark even if the goods are not infringing in
either the country of origin or the destination country. If
implemented as drafted, that could hit not just counterfeiters
but legitimate shippers in cases where different companies own
the same mark in different territories (for example in the
For these reasons I
would not be surprised if this plan is watered down in debate
(remember that these proposals have to go through the European
Parliament, pictured left). As even one supporter of the
proposal put it to me, it would make more sense to require that
the infringing sign be both the same as the registered mark in
the EU and identical to a mark registered in either
the country of origin or destination.
As it happens, I’m moderating a session on the
EU proposals at the Fordham IP
Conference in New York on Friday. Hopefully
I’ll be able to report back on what the panellists
think about this issue next week.