The transit dilemma revisited: the new Customs Regulation and the legislative package on trade marks

Abstract

Carl De Meyer and Carina Gommers are partners of Hoyng Monegier LLP, based in Brussels. They both specialise in intellectual property and have substantial expertise relating to border detention programs. After Philips/Nokia, customs authorities could detain goods in transit in application of the Customs Regulation when there was an indication of infringement, but in the ensuing substantive proceedings holders of intellectual property rights would have to prove the actual infringement in the EU. In most cases, the evidence of such actual infringement is not available for the holders of the intellectual property right. We have therefore called upon the European Commission to provide for a reversal of the burden of proof: when customs authorities decide to detain goods in transit in accordance with Philips/Nokia, hence when there is an indication of infringement, there would be a rebuttable presumption that these goods are also destined for the EU. This reversal of the burden of proof is however not included in the new Customs Regulation that will be effective as from 1 January 2014. On the contrary, the new Customs Regulation now seems to require proof of an infringement in the Member State where the goods are being detained by customs, raising the bar for holders of intellectual property rights even further. When the EU legislator is really committed to enhance the protection of intellectual property rights, it must now come forward with adequate proposals to tackle the transit debacle because only then will the Customs Regulation remain an effective tool to block the illegitimate trade in infringing goods. An immediate change in the substantive laws dealing with intellectual property rights is therefore an absolute necessity. A first step in the right direction is taken in the legislative package regarding trademarks, since the act of transit is therein under certain circumstances qualified as an infringement of intellectual property rights under EU or national law.