Strengthening the Protection and Enforcement of Intellectual Property Rights in Ukraine Activity October 2014

COURT CASES Strengthening the Protection and Enforcement of Intellectual Property Rights in Ukraine

Joined Cases C-446/09 & C-495/09, 1 December 2011 (Philips, Nokia) 3

 Commissioners of Revenue and Customs.  References for a preliminary ruling: - Common commercial policy – Combating the entry into the EU of counterfeit and pirated goods – Regulations (EC) No 3295/94 and No 1383/2003 – Customs warehousing and external transit of goods from non- member States which constitute imitations or copies of goods protected in the EU by intellectualproperty rights – Action by the authorities of the Member States – Conditions 4

Joined Cases C-446/09 & C-495/09, 1 December 2011 (Philips, Nokia)  goods coming from a non-member State which are imitations of goods protected in the European Union by a trade mark right or copies of goods protected in the European Union by copyright, a related right or a design cannot be classified as ‘counterfeit goods’ or ‘pirated goods’ within the meaning of those regulations merely on the basis of the fact that they are brought into the customs territory of the European Union under a suspensive procedure; 5

Joined Cases C-446/09 & C-495/09, 1 December 2011 (Philips, Nokia)  those goods may, on the other hand, infringe the right in question and therefore be classified as ‘counterfeit goods’ or ‘pirated goods’ where it is proven that they are intended to be put on sale in the European Union, such proof being provided, inter alia, where it turns that the goods have been sold to a customer in the European Union or offered for sale or advertised to consumers in the European Union, or where it is apparent from documents or correspondence concerning the goods that their diversion to European Union consumers is envisaged; 6

Joined Cases C-446/09 & C-495/09, 1 December 2011 (Philips, Nokia)  Suspend the release of or detain those goods if there are rounds for suspecting that such an infringement exists. Indicators, inter alia: - destination of the goods is not declared whereas the suspensive procedure requested requires such a declaration. -the lack of precise or reliable information as to the identity or address of the manufacturer or consignor of the goods, a lack of cooperation with the customs authorities. -discovery of documents or correspondence suggesting that there is liable to be a diversion of those goods to European 7

Case C-324/09, 12 July 2011 (L’Oréal) 8 

Preliminary ruling - Trade marks – Offer for sale, on an online marketplace of trademarked goods intended for sale in third States – Removal of the packaging of the goods –Directive 89/104/EEC – Regulation (EC) No 40/94 – Liability of the online-marketplace operator – Directive 2000/31/EC (‘Directive on electronic commerce’) – Injunctions– Directive 2004/48/EC (‘Directive on the enforcement of intellectual property rights’)) 9

Case C-324/09, 12 July 2011 (L’Oréal)  According to the CTM Directive, a TM holder, can prevent the sale, offer or advertising by an economic operator on an online marketplace (without his consent) to a consumer located in the territory covered by the TM of goods located in a third State, which bear a trade mark registered in a Member State of the European Union or a Community trade mark and have not previously been put on the market in the European Economic Area 10

Case C-324/09, 12 July 2011 (L’Oréal) Where the proprietor of a trade mark supplies to its authorised distributors items bearing that mark, intended for demonstration to consumers in authorised retail outlets, and bottles bearing the mark from which small quantities can be taken for supply to consumers as free samples, those goods, in the absence of any evidence to the contrary, are not put on the market within the meaning of Directive 89/104 and Regulation No 40/94. 11

Case C-324/09, 12 July 2011 (L’Oréal)  the proprietor of a trade mark may, oppose the resale of goods such on the ground that the person reselling the goods has removed their packaging, where the consequence of that removal is that essential information, such as information relating to the identity of the manufacturer or the person responsible for marketing the cosmetic product, is missing. 12

Case C-324/09, 12 July 2011 (L’Oréal)  Where the removal of the packaging has not resulted in the absence of that information, the trade mark proprietor may nevertheless oppose the resale of an unboxed perfume or cosmetic product bearing his trade mark, if he establishes that the removal of the packaging has damaged the image of the product and, hence, the reputation of the trade mark. 13

Case C-324/09, 12 July 2011 (L’Oréal)  Directive 2000/31/EC of 8 June 2000 on certain legal aspects of information society services (‘Directive on electronic commerce’) must be interpreted as applying to the operator of an online marketplace where that operator has not played an active role allowing it to have knowledge or control of the data stored. -optimising the presentation of the offers for sale in question or promoting them. -Given the circumstances, was not diligent to detect that those offers for sale were unlawfful LIABLE FOR DAMAGES 14

Case C-324/09, 12 July 2011 (L’Oréal)  Article 11 of Directive 2004/48/EC on the enforcement of intellectual property rights must be interpreted as requiring the Member States to ensure that the national courts are able to order the operator of an online marketplace to take measures which contribute, not only to bringing to an end infringements of those rights by users of that marketplace, but also to preventing further infringements of that kind. Those injunctions must be effective, proportionate, and dissuasive and must not create barriers to legitimate trade. 15

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