Warm, Hot and Burning TM Issues CIIR Insight, 24 November 2016 Seizure of Goods in Transit Prof. Dr. Martin Senftleben Vrije Universiteit Amsterdam Bird & Bird, The Hague

Contents Past (warm): patent law Present (hot): trade mark law Future (burning): unresolved questions

Past debate: patent law

Patent infringement in transit cases? owner of European patent rights importer of generics in Brazil producer of generics in India

Article 41(1) TRIPS appropriate measures against infringement ‘…ensure that enforcement procedures […] are available […] to permit effective action against any act of infringement of intellectual property rights covered by this Agreement,…’ within the international trade framework ‘These procedures shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.’

Article V(3) GATT concrete guarantee of free transit ‘Any contracting party may require that traffic in transit through its territory be entered at the proper custom house, but, except in cases of failure to comply with applicable customs laws and regulations,... such traffic coming from or going to the territory of other contracting parties shall not be subject to any unnecessary delays or restrictions.’

CJEU, December 1, 2011, case C-446/09, Philips and Nokia infringement (-) as long as goods are truly in transit to another country ‘The Court has repeatedly deduced from that fact that goods placed under a suspensive customs procedure cannot, merely by the fact of being so placed, infringe intellectual property rights applicable in the European Union…’ (para. 56)

CJEU, December 1, 2011, case C-446/09, Philips and Nokia infringement (+) the moment the goods may be put on the internal market ‘On the other hand, those rights may be infringed where, during their placement under a suspensive procedure […], or even before their arrival […], goods coming from non-member States are the subject of a commercial act directed at European Union consumers, such as a sale, offer for sale or advertising.’ (para. 57)

Illegitimate trade in fake drugs Legitimate trade in generics World policing in transit cases? Illegitimate trade in fake drugs Legitimate trade in generics

New initiative: trade mark law

Trade mark infringement in transit cases new Art. 10(4) TMD and Art. 9(4) EUTMR ‘...to prevent all third parties from bringing goods, in the course of trade, into the Member State where the trade mark is registered, without being released for free circulation there,… …where such goods, including the packaging thereof, come from third countries and bear without authorisation a trade mark which is identical with the trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark.’

EU extravagance

Compliance with international law Recital 21 TMD ‘...in line with international obligations of the Member States under the World Trade Organisation (WTO) framework, in particular… …Article V of the General Agreement on Tariffs and Trade on freedom of transit and,… …as regards generic medicines, the ‘Declaration on the TRIPS Agreement and public health’ adopted by the Doha WTO Ministerial Conference on 14 November 2001,…’

Compliance with international law link with country of final destination ‘The entitlement of the trade mark proprietor pursuant to the first subparagraph shall lapse if, during the proceedings to determine whether the registered trade mark has been infringed, initiated in accordance with Regulation (EU) No 608/2013, evidence is provided… …by the declarant or the holder of the goods that the proprietor of the registered trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination.’

Open questions

Separating the wheat from the chaff

EU legislator going to far? burden of proof sufficient safeguards against encroachment upon international freedom of transit? unnecessary delay prohibited in Art. V(3) GATT meaning of ‘…not entitled to prohibit the placing of the goods on the market in the country of final destination’ registration evidence sufficient? Art. 6bis PC and Art. 16(2) TRIPS limitations of trade mark protection

Wolf in sheep’s clothing?

Trade mark right harmless? much resistance against transit seizure based on patent rights patent = protection of decisive product features less resistance against transit seizure based on trade mark rights? trade mark = source identifier attached to product different configuration relevant in practice? referential use of trade mark to inform consumers generic medicine and repackaging cases but: INNs remain free under Recital 25 TMD

Towards a new worldwide standard? status in international law? footnote 13 TRIPS (‘...no obligation to apply [customs] procedures to [...] goods in transit.’ no international obligation proliferation under Art. 18.76.5 TPP? effect on international trade if transit seizure became widespread practice?

contact: m.r.f.senftleben@vu.nl The end. Thank you! contact: m.r.f.senftleben@vu.nl