Trademark Enforcement within the European Union: The Development of Provisions Concerning Counterfeit Goods in Transit

The article aims to examine the legal situation relating to counterfeit goods in transit and the responsibilities of intermediaries in the transport of such goods within the European Union (EU). Reference will be made to regulations that preceded Regulation 1383/2003 and the amendments brought about by such regulations. The development of laws concerning border measures within the EU has been rapid, however, despite the implementation of Regulation 1383/2003, the problem of counterfeit goods passing through the EU still stands. Furthermore, in Philips/Nokia, the European Court of Justice (ECJ) held that goods coming from non-member states and held by customs under suspended procedures could be detained if suspected that they may be diverted into the EU markets. However, the manufacturing fiction doctrine may not be taken into consideration when assessing infringement, as actual proof of infringement is required. This places a high burden of proof on trademark owners, as the mere existence of an indication that the goods will be put on the EU market is not sufficient. There must be substantive evidence such as advertising, offer for sale, or actual sale. The issue with this approach is the difficulty for trademark owners to prove or have access to the information to meet this burden of proof as only the parties involved in the transshipment have the relevant information. This article aims to make several proposals in respect of remedying counterfeits in transit within the EU. It will provide analysis that will contribute to the balancing between the Customs regulation and international trade obligations.