Infringement of trademarks by goods in transit

Transcription

1 Question Q230 National Group: Germany Title: Infringement of trademarks by goods in transit Contributors: Dr. Nils WEBER Dr. Ralf HACKBARTH Jürgen RÖMHILD Dr. Andreas EBERT-WEIDENFELLER Detlef VON AHSEN Reporter within Working Committee: Dr. Nils WEBER Date: May 18, 2012 Questions I. Analysis of current legislation and case law The Groups are invited to answer the following questions under their national laws and if applicable their regional/community legislation: In-transit term 1) Does your country s law provide for an in transit concept (regardless of the exact terminology)? German law does not provide for a cohesive in transit concept expressly dealing with or even ruling on the questions raised by transit with respect to trademark law. However, customs law provides for suspensive customs procedures, external transit procedures and customs warehousing procedures pursuant to Art a) Customs Code (based on Regulation (EEC) No. 2913/92) ruling on the transit of goods under customs law. In principle, provisions under customs law and trademark law are independent legal norms. However, both systems overlap through existing provisions on border measure proceedings requiring a uniform interpretation and application of terms and provisions by making reference to each other. Trademark law does not contain any provisions on transit, it merely defines the import and export as infringing act pursuant to Sec. 14 III, No. 4 Trademark Act. Import is the physical transport of goods into the territory covered by the legislation. Export is the physical transport out of the territory covered by the legislation. Terminologically, this 1

2 would determine transit, if it was simply understood as the physical passage of goods through Germany. Customs law does not deal with transit either. However, it provides for simplified customs procedures allowing the transit of goods without any customs duties. According to Art. 84 1a) Customs Code, these procedures are called transit procedure or customs warehousing procedure, two sub-cases of the so-called suspensive transit procedure. As it can be taken from the provisions under Art. 91 et seq., 98 et seq. Customs Code, these procedures are applicable for those goods, which are not intended for free circulation in the EU, but shall be delivered from one third country to another. It is true that, as a result of these procedures, goods being placed under these procedures are physically in the customs territory, but they can pass the territory without any customs duties, but under customs control. In addition, Art. 166 ff. Customs Code provides for free warehouses and free zones. This means that goods can, without any particular consequences under customs law, be imported and exported to third countries, stored, processed or treated without close surveillance under customs law. It is not until they are transferred to a separate customs procedure, e.g. when they are released for free circulation, that the specific provisions under customs law take effect. Customs Code does not address the question of whether customs authorities may seize goods being placed under these procedures or which are stored in free warehouses or free zones, if they could infringe third parties trademark rights. Border measure provisions pursuant to Sec. 146 Trademark Act and pursuant to the European Border Measures Regulation EC No. 1383/2003 do not deal with the issue of transit either. However, under the provisions in specific situations customs authorities are allowed to take hold of goods and to detain them if the goods are suspected to infringe intellectual property rights. As already stated, the issue of transit is not addressed here nor is it mentioned as a separate element. 2) If yes to question 1, what term is used in your country to describe this concept? Assuming that, despite these rudimental provisions, there is a transit concept, the transit procedure or the customs warehousing procedure would probably describe it in the most appropriate way. 3) If yes to question 1, does your country make any distinction between customs transit, transhipment and in-transit? No. 4) Does your country s in transit concept include for example customs warehouses, free warehouses, free zones and other customs procedures under which the goods are not released for free circulation and are kept under customs control? Yes. As mentioned under I. 1., there exist customs warehouses, free zones and free warehouses in Germany. By means of the transit procedure and the customs warehousing procedure, the suspensive customs procedure provides for procedures under which the goods are not released for free circulation under customs law and kept under customs control. 2

3 Goods in transit infringement In the following questions 5-12, in-transit refers to the term used in your country. 5) Are goods in transit considered to fall within the trademark owner s exclusive right to prevent others from importing goods bearing the trademark? According to case law of the ECJ and the BGH, import of goods means the physical transport of goods to the territory of the Federal Republic of Germany with the aim to put them on the market here. If the sender or addressee chooses a customs warehousing procedure or external transit procedure and if there are no indications that the goods may nevertheless be put on the market in Germany, it is assumed in case law that a putting onto the market does not take place. Hence, the trademark owner may only prohibit the transit of goods bearing his trademark if, despite the use of the customs warehousing procedure or the external transit procedure, there is a risk of diversion and, thus, import of these goods. 6) Taking into account the following scenarios, are goods in transit considered to be infringing in the country of transit if: i. goods bearing a trademark are sent from country A (where it is not registered) to country C (where it is not registered) via transit country B (where it is registered). If the goods are placed under the customs warehousing procedure or the transit procedure and if there are no sustainable indications that the goods may nevertheless be put on the market in Germany, an infringement of German trademarks does not exist (BGH GRUR 2007, 875 Durchfuhr von Originalware). ii. the trademark owner has a valid trademark registration only in the country of destination (country C). Due to a lack of trademark protection in Germany, German trademarks are not infringed. However, if, during a border measure proceeding according to EC Regulation No. 1383/2003, German customs authorities also have to watch national trademarks of a EU Member State, the transit through Germany may be the beginning of a trademark infringement in the other Member State. This depends on the respective trademark law of the country of destination C. iii. the trademark owner has a valid trademark registration only in the country of origin (country A). Due to a lack of trademark protection in Germany, German trademarks are not infringed. iv. the final destination of the goods is not known at the time of entrance of the goods in the transit country (consider both scenarios where it is registered in country B and where it is not registered in country B). If there is no trademark protection, a trademark infringement can be excluded. 3

4 If a registration exists, the lack of a destination country may lead to the fact that the risk of the goods being put on the German market is assumed. However, the mere fact that there is no country of destination would not suffice. There would have to be further irregularities in the customs documents or other indications which may prevent the transit. If this is the case, customs authorities may act (ECJ GRUR 2006, 146 Class International). 7) In those scenarios where in-transit goods are considered to infringe a registered trademark right in the transit country: i. Would that be the case if it is shown that goods will be or that there is a risk for the goods being illicitly diverted into the market in the transit country? If the goods were put on the market in the transit country or if there was a clear risk, a trademark infringement would be assumed (BGH GRUR 2007, 875 Durchfuhr von Originalware and ECJ NJOZ 2012, 395 Nokia). ii. Who has the burden of proof to show that goods will be or that there is a risk for the goods being illicitly diverted into the market of the transit country? The trademark owner or, in case of border measure proceedings, the customs authorities (ECJ GRUR 2007, 146 Montex/Diesel) iii. What is the nature of evidence that may have to be submitted in this regard? It has to be furnished clear evidence that it appears to be probable that there is a risk of the goods being put on the market in Germany. The trademark owner has the full burden of proof ( Vollbeweis ). iv. What is the standard of proof in such cases? Such evidence could be customs documents. If they show irregularities (e.g. the sender is not indicated, the goods are wrongly declared, the addressee is concealed), this would suffice to constitute a trademark infringement. Documents certifying the sale or the promotion of the goods in the country of transit would also be clear evidence (ECJ NJOZ 2012, 395 Nokia). Categories of goods and trademarks 8) Are there any differences as to whether goods in transit are considered to be infringing in the country of transit if the goods are (i) counterfeit, (ii) parallel traded or (iii) bear confusingly similar trademarks? According to German law, a trademark infringement can exist in all three constellations. The first case concerns protection against identical trademarks pursuant to Sec. 14 II No. 1 Trademark Act which provides that a trademark infringement exists if identical signs are used for identical goods. The second case also concerns the protection against identical trademarks and requires that the trademarks owner s rights are not exhausted within the meaning of Sec. 24 Trademark Act. Finally, the third case relates to the case of a trademark infringement under the conditions of a likelihood of confusion pursuant to Sec. 14 II No. 2 Trademark Act. According to case law of the ECJ and the BGH, in each constellation a trademark infringement in transit requires that the goods have been put on the market in their country or that there exists such a risk (BGH GRUR 2007, 876, 4

5 marginal no. 18 DIESEL II). The same applies to parallel traded goods (ECJ GRUR 2006, 146, marginal no. 50 Class International/Colgate Palmolive). However, the detention of goods by customs authorities according to the provisions of Regulation (EC) No. 1383/2003 can already be justified by indications suggesting a trademark infringement (ECJ GRUR Int. 2012, 134, marginal no. 61 Philips/Nokia). The provisions of this Regulation cover the first constellation. The third constellation can also be covered if the infringing trademark cannot be distinguished from the registered trademark in its essential characteristics (Art. 2 I lit. a) i)). However, the provisions do not apply to parallel traded goods according to the second constellation (Art. 3 III). However, national regulations on border measure proceedings provide that the customs authorities may also take action in the second constellation (Sec. 146 Trademark Act). 9) Is there any extended or special protection for well-known and famous trademarks in respect of goods in transit? According to German law, well-known and famous registered trademarks enjoy extended protection which may also cover dissimilar goods, as far as their repute or distinctiveness is taken advantage of or is affected (Sec. 14 II No. 3 Trademark Act). In addition, according to German law, a trademark which has acquired prominence can be protected as a trademark in use (Sec. 4 No. 2 Trademark Act). Moreover, a well-known trademark within the meaning of Art. 6bis of the Paris Convention enjoys protection (Sec. 4 No. 3 Trademark Act). In accordance with the answer to question 8, a trademark infringement in transit may exist, if it can be shown that the goods are put on the market. However, the customs authorities are not allowed to act according to the provisions of Regulation (EC) No. 1383/2003 (Art. 2 I lit. a) i)). 10) Does the extended or special protection under question 9 above, exist even where no registration has been obtained in the country of transit? As far as trademarks in use (Sec. 4 No. 2 Trademark Act) and notorious trademarks (Sec. 4 No. 3 Trademark Act) are concerned, the provisions on trademark infringements also apply to these marks (Sec. 14 I Trademark Act). However, due to the lack of a registered trademark, the customs authorities are not allowed to act according to the provisions of Regulation (EC) No. 1383/2003 (Art. 2 I lit. a) i)). Border measures and Remedies 11) Are border measures available for goods in transit under your statutory law? If yes, please quote the corresponding article(s) or paragraph(s). According to the wording of Regulation (EC) No. 1383/2003 (in the following: Regulation 1383/2003), border measure proceedings are also admissible in case of so-called suspensive customs procedures (expressly: Art. 1 I lit. b Regulation 1983/2003). It provides that customs authorities may also act if the goods are transferred to a suspensive customs procedure within the meaning of Art. 84 I lit. a Regulation (ECC) 2913/92 (in the following: Customs Code). According to this provision, suspensive customs procedures include transit procedures, customs warehousing procedures, inward processing, conversion under customs control and the temporary use (cf. Rinnert/Witte GRUR 2009, 29 et seq.). For example, the transit procedure (Art. 91 et seq. Customs Code) consists in the transit of goods in a sealed container through the territory of the Community (cf. ECJ GRUR Int. 2000, 748, 750, marginal no. 26 et seq. Polo/Lauren/Dwidua). 5

6 However, under substantive law the mere transit does not constitute a trademark infringement. Therefore, the trademark owner still bears the risk when arranging for border seizures (Ströbele/Hacker, 10th edition, Sec. 150, marginal no. 8 with further references). According to Art. 19 III Regulation No. 1383/2003 and Sec. 149 Trademark Act, he has to compensate damages in case of an unjustified border seizure even if he is not responsible (cf. Heinze/Heinze GRUR 2007, 240, 245 et seq.; Ströbele/Hacker, Sec. 14, 169). The ECJ has dealt with this contradiction in combined Cases C-446/09 and C-495/09 (ECJ GRUR Int. 2012, 134 et seq. Nokia/Philips; Eichelberger WRP 2012, 235 et seq.; Ströbele/Hacker, 10th edition, Sec. 150, marginal no. 7 with further references). Insofar, one has to distinguish as follows: The customs authorities may detain or suspend the release of goods if there are indications that a trademark infringement exists. Such an indication may be that there is a lack of cooperation with the customs authorities or if documents are discovered suggesting that there is a risk of diversion of these goods to the EU (ECJ GRUR Int. 2012, 134 et seq., marginal no. 61). Examples: Contrary to the provisions, the destination of goods is not declared or there is no precise or reliable information about the identity or the address of the manufacturer or consignor of the goods. It is the circumstances of the particular case which are decisive. It is not sufficient that there is the possibility of a fraudulent diversion to the EU. However, in infringement proceedings, the requirements for the infringement of an industrial property right are stricter: There has to be actual proof of the infringing use in a country (cf. Eichelberger WRP 2012, 235 et seq., von Weiser, GRUR-Prax 2011, 552). It has to be proven that the goods are intended to be put on the market in the EU, i.e. that a trademark infringement would have taken place. Thus, before initiating a procedure according to Art. 10 Regulation No. 1383/2003, the trademark owner has to assess whether or not he can finally prove that the detained goods are deemed to be infringing in the territory of the European Union. 12) Does your case law / jurisprudence deal with border measures regarding goods in transit? If yes, please comment if possible trends can be observed from court precedents, and in which direction. Border measures regarding goods in transit are dealt with in detail by case law and jurisprudence (cf. Ströbele/Hacker/, Trademark Act, 3rd edition, comments on Sec. 150 and the essays mentioned above). It is pointed out in literature that Regulation No. 1383/2003 neither contains its own elements of infringement nor influences national legal provisions; it is accessory to the intangible property law (Eichelberger WRP 2012, 285, 286). According to the Nokia/Philips decision (ECJ GRUR Int. 2012, 134 et seq.), Regulation No. 1383/2003 is only applicable as far as an infringement under substantive law exists. 13) What kinds of remedies are available if goods in transit are considered to be infringing in the transit country? Are, for example, injunctions, monetary damages, or destruction of such goods possible? If it is proven that a diversion to consumers in the EU is planned, the trademark owner has the same rights and remedies as in case of a normal trademark infringement. The only difference is that, as a result of the goods being detained at the border, a substantial infringement cannot take place. 6

7 According to Art. 10 Regulation No. 1383/2003, the trademark owner may either initiate a preliminary injunction proceeding or bring a main court action so that the infringement is established. In addition, it is possible to take measures under criminal law (Ströbele/Hacker, 10 th edition, marginal no. 38 with further references). In practice, preliminary injunction proceedings are predominant. The asserted claim for forbearance is designed to prohibit the import and/or the offering and/or the distribution under the infringing trademarks. In practice, it is also requested in preliminary injunction proceedings to seize the detained goods for the purpose of destruction until the conclusion of the main court action. This is because, as a rule, in preliminary injunction proceedings it is not possible to request destruction, since the destruction in preliminary injunction proceedings would inadmissibly anticipate the result of the main action (cf. Ströbele/Hacker, 10 th edition, Sec. 150, marginal no. 36, who recommends to bring a main action). The destruction of goods (Sec. 18 Trademark Act) is essential in the practice of border measures, since it is always counterfeit goods which are concerned. Damage compensation can also be claimed (as it can be in case of a normal trademark infringement) as well as information about the scope of infringement. 14) If the answer to question 13 includes monetary damages, how are the damages computed? Damages are computed in the same way as in case of a normal trademark infringement. However, since in case of a successful suspension of release/detention the goods are not put on the market, the calculation of damages based on the concrete computation of damages will no longer be possible due to the lack of domestic turnovers. In any event, the costs for sending a cease and desist and arranging for destruction or storing of goods can be asserted on the basis of legal provisions on damages. If and to the extent to which the transit constitutes a trademark infringement, damages may, however, be computed on the basis of the license analogy. It is only the extent of the trademark infringement, e.g. the quantity of infringing goods, which has to be taken into account based on a reasonable fictitious license fee. There is obviously no reason for such trademark infringements to be privileged. 15) If the answer to question 13 includes destruction of the infringing goods, who is responsible for ensuring the destruction of the infringing goods? Pursuant to Sec. 150 V Trademark Act ruling on the procedures according to Regulation No. 1383/2003, the goods are destructed at the expense and under the responsibility of the trademark owner. Pursuant to Sec. 150 VI Trademark Act, the customs authorities may organize the destruction. II. Proposals for harmonisation The Groups are invited to put forward proposals for the adoption of harmonised rules as to the infringement of trademarks by goods in transit. More specifically, the Groups are invited to answer the following questions. Please note that in-transit in the following refers to the term in a broader sense and is not limited to a specific customs procedure. Goods in transit infringement 7

8 16) Should goods in transit be considered to infringe a registered trademark in the transit country? If yes, why? If no, why not? Trademark Law is a law applicable in a specific territory and which inter alia allows trademark owners to prevent trademark infringing goods from entering this territory. German Trademark Law provides for the import prohibition to avoid any, even abstract danger of a substantial trademark infringement. In contrast to customs law, there is no fictitious unlegislated room in Germany under trademark law. But it also has to be considered that goods may be transported from country A to country B on various ways and, hence, avoiding transit through a country in which the trademark is protected. Moreover, freedom on the way of transportation is a high legal good in international laws and in the internal market. For this reason, transit goods should only be considered as not being trademark infringing, if the consignor and the carrier have made sure that the goods will not be put on the market in the transit country. 17) Should it matter whether the goods have been lawfully manufactured in and/or exported from the country of origin? It would help the trademark owners very much if goods unlawfully manufactured in and/or exported from the country of origin could be stopped at any stage of the delivery chain. However, there is the problem that authorities from one country would have to deal with foreign law to determine an infringement. The question of whether there exists a trademark infringement according to German law would depend on the provisions of trademark law in a foreign country. According to German trademark law, there is no legally admissible basis for such an assessment. The question of whether a trademark infringement has taken place should not depend on such coincidences either. Deficits in the execution of laws are in fact a clear argument to always consider the transit as trademark infringement in Germany in order to assert trademark law at least in Germany. 18) Should it matter whether the goods could be lawfully put on the market in the country of destination? Here the same applies as stated above for the country of origin. In this respect, we also refer to the study carried out by the Max-Planck-Institute, GRUR 2012, 197, 204. In addition, it should be noted that the distribution of goods which are still abroad and intended to be imported and distributed in Germany can be prevented on the legal basis that an infringement might be committed. 19) If in-transit goods are not considered to infringe a registered trade mark in the transit country, should there be an exception if it is shown that the goods will be or that there is a risk for the goods being illicitly diverted onto the market in the transit country? Yes, any risk that the goods are illicitly diverted onto the market of the transit country should be avoided. Here the interest of the trademark owner in protection of his trademark is more important than the interest of the forwarding agent etc. in quick and inexpensive transportation. However, a proceeding cannot be based on trademark law, but only on public provisions, e.g. AMG (German Pharmaceuticals Act), and, possibly, on Sec. 4 XI Unfair Competition Act under the aspect of a breach in law. Insofar, German trademark law is 8

9 neutral, unless the reputation of a well-known trademark pursuant to Sec. 14 II No. 3 Trademark Law is harmed. 20) What kind of evidence should be presented for this exception to take effect? Insofar a reversal of the burden of proof could be provided. It is the forwarding agents responsibility to take due care that illicitly diverted goods are avoided. Categories of goods and trademarks 21) Should infringement by goods in transit be limited to counterfeit goods or should also parallel traded goods and goods bearing confusingly similar goods be considered to infringe when in-transit? (a) Infringement of trademarks by goods in transit shall, aside from counterfeited goods, include parallel traded goods which are trademarked as well, however restricted to cases when trademarks are not exhausted; goods which have already been put on the market in another EU member state are subject to exhaustion. There is no reason to privilege parallel traded, trademark infringing goods if there is reason to believe that these goods will be introduced to the EU market (see ECJ, C-446/09 and C-495/09). (b) Infringement shall also be found when counterfeited goods are trademarked with confusingly similar, but not idential trademarks. Otherwise, counterfeiters would have easy means to prevent legal means by amending the original trademark slightly. (c) Infringement by parallel traded goods which are trademarked with confusingly similar, but not idential trademarks is, in practice, rare. Parallel traders intend to leave the trademarks identical even if those products have been re-labelled or re-boxed by the parallel trader. Thus, in cases with global trademarks, trademarks in the country of origin and in the country of transit are usually identical. If, however, transit goods bear a name as used in the country of origin and such name is different, but confusingly similar to the trademark in the country of transit the doctrine of exhaustion governs: The trademark on transit goods which have already been put on the EU-market before are exhausted. If, however, transit goods have not been put on the EUmarket before, the trademark owner is entitled to object to the use of a trademark which is confusingly similar to his trademark in the country of transit. Again, there is no reason to privilege parallel traded, trademark infringing goods if there is reason to believe that these goods will be introduced to the EU market (see ECJ, C-446/09 and C-495/09). If transit goods bear a trademark different from the one in the country of origin and such trademark has been put on the product by the parallel trader by way of re-branding, exhaustion of the rights in the original trademark does not matter (see BGH, Judgment of July 11, I ZR 35/00 Aspirin, para. 41). Thus, the trademark owner is entitled to object to the use of a trademark which is confusingly similar to his trademark in the country of transit - if there is reason to believe that these goods will be introduced to the EU market. 22) Should famous and well-known trademarks enjoy extended protection in respect of goods in transit? If so, should this be the case even when no registration has been obtained in the country of transit? Yes, famous and well-known trademarks shall enjoy extended protection in respect of goods in transit, regardless whether a registration in the country of transit has been 9

10 obtained; this, however, shall only be the case, if the famous or well-known trademark does enjoy this status in the country of transit. Border measures and Remedies 23) Should border measures be available for goods in transit? Border measures should be available for goods in transit, if it is not absolutely clear that the goods will merely cross the transit country. It should not be up to the trademark owner to prove that the goods may be put on the market in the transit country, but to the sender to prove that this will definitely not happen. 24) Should the same remedies (such as injunctions, monetary damages and destruction) be available for infringement by goods in transit as for other trademark infringements? There is no practical or legal argument against it. 25) Should the same defenses be available for the importers of goods in transit as for goods under direct importation from the country of origin or other? If and as far as a trademark infringement in transit is regarded as any other trademark infringement, it is consistent and fair that the importers and infringers have the same defences like any other infringer. National Groups are invited to any additional issue concerning the infringement of trademarks by goods in transit. Summary There is no uniform in transit concept in Germany according to customs and trademark law. In jurisdiction, in particular cases the transit procedure and the customs warehousing procedure have come to be the privileged transit procedures under trademark law. Due to the constant risk that goods in transit may be put on the market in the transit country, the question of transit should, even with respect to the mentioned customs procedures, only be excluded from trademark law, if, by means of the customs documents, the integrity of the consignor and the consignee and any other circumstances, it is ensured that the goods are not put on the market in Germany. It should be the trademark owner and not the consignor who has the benefit of the doubt. Résumé Il n y a pas de concept de transit unitaire en Allemagne selon le droit de douane et le droit de marques. Dans la juridiction, le procédé d envoi et l entrepôt douanier se sont montrés d être des procédés de transit privilégiés dans certains cas selon le droit des marques. En vertu du risque toujours inhérent au transit, c est-à-dire que la marchandise en transit soit lancé sur le marché national, le transit doit seulement être exempté du droit de marques dans les procédés douaniers mentionnés s il est assuré à l aide des documents douaniers, du caractère inoffensif de l expéditeur ou du destinataire ainsi que de tous les faits concomitants que la marchandise ne sera pas mis sur le marché en Allemagne. Des doutes doivent être à la charge de l expéditeur, et ne pas du propriétaire de la marque. 10

11 Zusammenfassung Es gibt kein zoll- und markenrechtlich einheitliches Transit Konzept in Deutschland. In der Rechtsprechung hat sich das Versandverfahren und das Zolllagerverfahren als markenrechtlich priviligiertes Transitverfahren in bestimmten Fällen gezeigt. Aufgrund der mit dem Transit immer verbundenen Gefahr, dass die Transitware im Inland in den Verkehr gelangt, sollte Transit selbst in den genannten Zollverfahren nur dann vom Markenrecht ausgenommen werden, wenn anhand der Zollpapiere, der Unbedenklichkeit des Versenders und Empfängers sowie aller sonstigen Begleitumstände sichergestellt ist, dass die Ware nicht in Deutschland in den Verkehr gebracht werden wird. Zweifel müssen zulasten des Versenders gehen und nicht zulasten des Markeninhabers. 11