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Wednesday, 25 August 2010

Nokia fakes case: silence over official submission

The IPKat's post yesterday ("British customs attract international attention", here) was mild enough, but it has drawn a response from a tireless fighter for justice for rights owners and consumers, the Anti-Counterfeiting Group's Ruth Orchard, which has inspired him to return to the theme with greater resolve. Writes Ruth:

"Since you ask about whose and what opinions were sent to Her Majesty's Government (HMG), here are the comments submitted by the Anti-Counterfeiting Group (ACG) here and MARQUES here to the Intellectual Property Office (IPO) International Policy Directorate in February, in response to the request they sent to 'interests'. Interestingly, the question the IPO asked its 'Interests' (in order to advise HMG how it should respond) was different to the question posed by the Court of Justice of the European Union (ECJ):

Whether customs authorities should detain goods bearing a Community trade mark that are in transit through the EU from a non-Member State to another non-Member State, in the absence of evidence that they will be diverted onto the market in Member States.
We understood that responses to this question would provide HMG with stakeholder views and contribute helpfully to its own intervention. (ACG's response - which I hope does not betray too much of the extreme frustration we all feel! - was sent with Nokia's prior input and approval, on behalf of all our members, for whom this is a very important issue). But we don't know if HMG actually made any observations to the ECJ, although we did ask at the time - the IPO reply was:

"I am afraid that it is not government policy to comment on whether or not the UK proposes to intervene in specific cases. The case details you are requesting will be available to the public in the Curia website in due course".
The Curia website does not contain anything other than the actual case and the question referred to the ECJ and I can't find any public record of Member States' interventions (we asked our colleagues in other EU countries to lobby their own governments to intervene, as well).

Just to add to the excitement, we also still don't know whether the ECJ will accede to the Court of Appeal's request to join the Nokia referral with another transit case (brought under a previous Customs Regulation), Case C-446/09 Koninklijke Philips Electronics N.V. v Lucheng Meijing Industrial Company Ltd and others. The question from the Philips case (which the INTA submission refers to, but doesn't replicate, in its submission) is:

Does Article 6(2)(b) of Council Regulation (EC) No 3295/94 of 22 December 1994 (the old Customs Regulation) constitute a uniform rule of Community law which must be taken into account by the court of the Member State which, in accordance with Article 7 of the Regulation, has been approached by the holder of an intellectual-property right, and does that rule imply that, in making its decision, the court may not take into account the temporary storage status/transit status and must apply the fiction that the goods were manufactured in that same Member State, and must then decide, by applying the law of that Member State, whether those goods infringe the intellectual-property right in question?
The IPKat says, here is an opportunity for the IPO and the British government to engage in a little valuable PR by engaging with an important organisation representing IP rights owners -- owners who at their own expense and inconvenience strive to police their markets and keep them free from poisonous, dangerous and economically damaging fakes. The answer the ACG received to its question is downright insulting. It may not be the British government's policy to comment, the government after all being sovereign and free to do whatever it wishes, without any sense of accountability to the companies which -- while lacking the vote-- contribute billions of pounds to the Exchequer through their taxes. It is however the IPKat's policy to comment: come on, tell us -- are you supporting the IP community or not? Surely you are not laying yourselves open to the accusation (which no polite Kat would make) of being so pusillanimous that you can't even tell the ACG whether you propose to intervene in this case?

6 comments:

Peter O'Byrne said...

When spoke with the CJ Registry a few months back they said that the UK had made written observations in Nokia. Apart from the parties, the following had submitted written observations: INTA, European Commission, the UK, Czech Republic, Italy, Poland, Portugal and Finland.

Devil's Advocate said...

I have not read the case, but I have some questions on the justification behind interfering with goods in transit.

If they are en-route from one country where they can be lawfully manufactured to another country where they can be legally sold, how does it affect the legitimate rights of an IPR owner when the goods merely pass through a country where the IPR is held? It seems wrong to me that the route the goods take between the origin and destination should be significant. Why has the IPR not been applied for (and granted) in either or both of the origin and destination countries, where it can be enforced directly? Why should the IPR holder be entitled to effective rights in these countries when they couldn’t be bothered to apply for them, or where they are not entitled, or where the rights do not exist?

The issue of poisonous and dangerous goods seems a bit of a red herring to me. Surely, if they are dangerous in any way there would be appropriate controls in the countries of origin and destination that can be applied. Using IP seems an odd way to go about policing this sort of thing: can it be right that the dangerous goods become safe (or at least nothing to worry about) simply by changing the name on the packet to avoid clashing with a trademark in the intermediate state?

Another problem I have with these arguments is that they pick out worst cases and base the interpretation of the law on these. Presumably there will be a number of cases in which the goods are safe. Should these be decided on the facts of the dangerous cases? This brings us back to using a law specifically directed to protect consumers from dangerous goods, rather than trying to dress it up as an IP issue.

I also find the “economically damaging” aspect unsatisfying, as it seems to put the cart before the horse. Who is the economic damage to? Not the producer/exporter of the “fake” goods. There may be economic damage for the IPR holder, but unless an IPR is being infringed, the economic damage is surely just part of the cut and thrust of business. Whether or not the IPR is infringed is the question, and so arguing that the economic damage is unfair appears to beg the question.

I don’t necessarily believe that fakes should be allowed to move around freely, but I wonder if powers to prevent fakes would also be applied to products with patent protection in an intermediate country, products with accidentally clashing trademarks or grey imports.

Anonymous said...

If there is no infringement in either the countries of origin or destination, surely there is no legally relevant harm to the "IP rights owner"?

Anonymous said...

has anyone actually cleared up the status of the UK Government submissions to the ECJ in various cases - are they not amenable to being obtained under a freedom of information act request? Are they confidential and why are they not routinely published together with the script of the oral submissions made by the UK govn advocates?

in any event other parties submissions have been referred to before the UK courts without any particular confidentiality concerns - e.g. in the various ad words cases.

Anonymous said...

Of course the problem for HMG is unless it undertakes a volte face the position it should put to the ECJ is the one it took in the original case. There is a major problem with trademarks and international trade of which Nokia is imho only the tip of the iceberg. In theory Class International and Montex allow the EU to be used as a transit camp where traders can put goods of dubious provenance into temporary import, check their IP status and if "fake" ship them out elsewhere. Remember Customs can only use the regulations that are in place, if these are considered to be defective or lacking in force then it is up to the right holders to lobby and address the problem. A final point, I should not really need to remind such an august and learned pride of cats but the customs regulation is about IP rights (not counterfeit goods however you may term them). If the IP right is not infringed customs cannot intervene.

Anonymous said...

I understand that the same situation has been encountered on other CJ referrals for which the government has made a submission. It was attempted to obtain a copy of the Govt submissions in the Brustle v Greenpeace reference regarding Biotech Directive 98/44/EC to no avail.

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