Counterfeit goods marketed through online channels based outside EU can be destroyed

In its judgment of 6 February 2014, in the case Rolex v. Blomqvist, the Court of Justice ruled 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 state enjoys the protection afforded to that holder by the regulation at the time when those goods enter the territory of that Member State merely by the virtue of the acquisition of those goods.

A resident of Denmark, Mr. Blomqvist, ordered a watch described as Rolex from a Chinese on-line shop. The order was placed and paid for through the website but on arrival to Denmark the customs authorities suspended the customs clearance of the watch, suspecting that it was a counterfeit version of the original Rolex watch and that there had been a breach of copyright over the model concerned. Rolex requested Mr. Blomqvist to consent to the destruction of that watch by the customs authorities, but he refused to consent, contenting that he had purchased the watch for personal use and had not breach Danish law on copyright and trademarks. Rolex brought an action before the Danish courts in order to oblige Mr. Blomqvist to allow the destruction of the watch without compensation. The Danish court asked the Court of Justice to ascertain whether there is any distribution to the public and any use in the course of trade within the meaning of the copyright and trademark Directives.

The Court considered that goods coming from a non-member State which are imitations of goods protected in the European Union by a trademark or copyright can be classified as counterfeit goods where it is proven that they are intended to be put on sale in EU or offered for sale or advertised to consumers in the EU. Although the Danish Citizen did not breach Rolex’s intellectual property rights, the sale of counterfeit goods made from a Chinese on-line shop to a customer in the EU breaches the intellectual property rights merely by the virtue of the acquisition, without it being necessary to establish whether such on-line shop was intended for EU customers.