1. International IP Roundtable UNLV, 8 April 2016 Seizure of Goods in Transit
Prof. Dr. Martin Senftleben
VU University Amsterdam
Bird & Bird, The Hague

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

3. Art. 41(1) TRIPS
‘…ensure that enforcement procedures […] are available […] to permit effective action against any act of infringement of intellectual property rights covered by this Agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements.’
‘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.’

4. CJEU, December 1, 2011, case C-446/09, Philips/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)

5. CJEU, December 1, 2011, case C-446/09, Philips/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)

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

7. Trademark 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.’

8. Compliance with international law
Recital 15 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,…’

9. Compliance with international law
link with country of origin
‘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.’

10. sufficient safeguards?
Open questions
sufficient safeguards?
appropriate distribution of burden of proof?
Art. 6bis PC and Art. 16(2) TRIPS
impermissible delay?
status in international law?
footnote 13 TRIPS
no international obligation
difference between trademarks and patents?
proliferation under Art PTT?

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