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The watch that got seized in customs

December 2011 - Intellectual Property. Legal Developments by Norrbom Vinding Law Firm, member of ius laboris.

More articles by this firm.

by Søren Christian Søborg Andersen

Trademarks

A private consumer bought a Rolex copy on the internet. But he never received the watch for it was seized by Customs in accordance with the EU Customs Regulation

Danish consumers who buy counterfeit or pirated goods abroad and bring them back to Denmark in their luggage will not fall foul of the Danish Trademarks Act or the Danish Copyright Act as long as the goods are for their own private use. But in this case, the Copenhagen Maritime and Commercial Court had to decide whether the Danish customs authorities were entitled under the EU Customs Regulation to seize a Rolex copy bought by a Danish consumer on the internet.
A Danish consumer bought a “Rolex” watch from a Chinese website. The watch looked like the Rolex GMT Master II watch and was also sold under that name. The buyer was aware it was a copy. The counterfeit watch was discovered during a routine search of packages at the International Postal Centre of Post Danmark and was seized by Customs.
Customs notified the Danish Rolex trademark agent of the seizure, and a declaration was obtained from a Danish watchmaker, confirming that this was clearly a counterfeit Rolex. The Danish Rolex agent therefore asked Customs to uphold the seizure. Rolex also wanted to know who had bought the watch.
The matter ended up in the Copenhagen Maritime and Commercial Court because Rolex and the buyer disagreed about whether it had been legal to seize the watch.
 
Legal and illegal at the same time
The Court took the EU Customs Regulations as meaning that goods can be seized if they are infringing under the trademarks or copyright laws of the importing country. As a result, the counterfeit watch was to be treated as if it had been manufactured in Denmark. In that light, there was no doubt that Rolex's rights under Danish law would have been infringed if the counterfeit watch had been manufactured in Denmark.
But the EU Customs Regulation does not permit goods to be seized if they are imported into the EU in a traveller’s personal luggage. The Court found that this exception should be interpreted narrowly so as certainly not applying to small packages like the one at issue here. The fact that the watch was intended for private use did not change that.
Accordingly, the Court upheld the seizure and ordered the counterfeit watch to be destroyed without compensation to the buyer.
 
Norrbom Vinding notes:
  • that the case means that Danish consumers buying counterfeit or pirated goods on non-EU websites now risk having the goods seized in transit without being compensated and also, most likely, without being able to obtain a refund from the seller; and

  • that the Copenhagen Maritime and Commercial Court’s interpretation of the EU Customs Regulation has been widely questioned, which means that the Danish Supreme Court may decide to ask the EU Court for guidance in the event of an appeal.
The above does not constitute legal advice and should not be relied upon as such

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