In a decision that will please rights holders, the Court of Justice of the European Union (‘CJEU’) ruled last week that goods sold by a website based outside the EU are protected by EU intellectual property law if they are sold to a person in the EU. Mr Blomqvist lived in Denmark. He ordered a watch described as a Rolex from a Chinese website which was then sent to him from Hong Kong. The Danish customs authorities held the parcel on suspicion that it was a counterfeit. Rolex established that the watch was in fact counterfeit and asked Mr Blomqvist to consent to its destruction in terms of the EU Customs Regulation. He refused to consent on the basis that he had bought the watch lawfully. Rolex brought an action in the Maritime and Commercial Court in Denmark. That court granted Rolex’s claim so Mr Blomqvist appealed to the Supreme Court.

 

For the watch to be ‘counterfeit’ or ‘pirated’ goods under the Customs Regulation, it must infringe either the law of that Member State or EU law. The Supreme Court held that the watch was bought for personal use and so did not breach Danish copyright or trade mark law. However, the question remained whether there was a breach of EU law. The Supreme Court referred the question to the CJEU.

The CJEU looked at whether the watch had been distributed to the public or used in the course of trade thereby infringing EU copyright or trade mark law. The Court said that the fact that the sale had been made by a website outside the EU cannot deprive Rolex of the protection of the Customs Regulation. It held that sale of the counterfeit watch by the Chinese seller to an EU resident was, by itself, an infringement of EU trade mark rights and copyright, even if the website was not directed at EU residents. 

There have been decisions in the UK that support the proposition that whether a website targets UK customers is relevant in determining whether UK intellectual property rights have been infringed. The CJEU’s decision departs from this principle and it seems that it will now be enough to show that sales into the UK have taken place.