By Leonie Kroon and Anne Voerman (Amsterdam)
When taking action against illegal fake goods, you are no longer limited to goods destined for the EU. The new EU trademark rules introduce the right to take action against all goods at EU borders even when they are in transit (Article 9(4) of Regulation (EU) 2015/2424, and article 10(4) of Directive (EU) 2015/2436). Counterfeit and to some extent lookalike goods are infringing unless proven otherwise by their holder. This means a reverse of the high burden of proof that trademark owners previously faced under the ECJ’s Philips and Nokia case law. It is up to the holder of the goods to prove that the trademark owner cannot rely on trademark protection in the country of final destination.
Grab the momentum to give your brand protection activities a boost by considering the following takeaways:
- Optimize your EU customs border applications. This is the perfect time to consider which applications you currently have in place and if they sufficiently cover your trademark-portfolio and product range. Increase their effectiveness by adding as many relevant knockoff products, traders and transporters as possible. With targeted intelligence, customs actions can be optimized.
- EU trademark law is on your side now. The new rules will not prevent forgery of destination documentation nor a legal debate about the country of final destination, the existence of local trademarks rights and the infringement thereof. However, the starting point is that mere entry into the EU is infringing.
- Strong global trademark coverage can discourage counterfeiters from giving your brand a go. The more countries you cover, the harder the burden of proof for the holder of the goods. It can thus be worthwhile to also register your trademarks outside of your key markets.
- Prevent unclearness about the entitlement to your trademarks. If your trademark is registered in the name of a different group entity in the country of final destination, the holder of the goods can possibly use this against you. Consider preemptively bundling your trademarks in one owner’s name or put a transparent licence system in place.
- Feel strengthened by the leverage. Worldwide trademark coverage is not realistic for every brand. In case a shipment is destined for a country in which you do not have trademark rights, the new rules are expected to at least provide leverage in negotiations about a controlled release under strict conditions and guarantees that the goods will not be diverted to countries where you are covered.