Nokia blocks importation of genuine products in counterfeit packaging

Greece
The Athens Court of First Instance has granted Nokia Corporation’s request for a permanent injunction against a Greek-based importer of genuine Nokia mobile accessories put in counterfeit Nokia packages (Decision 4345/2010).
 
The products at issue - Nokia mobile phone accessories, such as car chargers, headsets and batteries - were provisionally seized by the customs authorities of Athens airport under the EU Customs Regulation (1383/2003). The shipper of the goods was a Hong-Kong based company and the recipient was a Greek wholesaler of mobile phone accessories. The products were genuine, but the packaging was not. A quick resolution of the dispute - under the simplified procedure set forth in Article 11 of the regulation - failed, as the recipient refused to consent to the destruction of the counterfeit packaging. The recipient claimed that the regulation applies to counterfeit products or counterfeit packaging that is marketed separately, but not to counterfeit packaging containing genuine products.
 
Nokia Corporation filed an infringement action against the recipient under Article 13 of the regulation, seeking to prevent the release of the products by the customs authorities. Nokia claimed that, under Greek law, the importation of genuine Nokia products in counterfeit packaging amounted to infringement of its trademarks. Nokia requested:
  • a permanent injunction preventing the importation of any goods (genuine or not) put in counterfeit Nokia packaging; and
  • the destruction of the seized counterfeit packaging.
In its defence, the defendant contended that:
  • it was a entitled to repackage genuine products under the conditions set out by the Court of Justice of the European Union (ECJ) in Loendersloot (Case C-349/95); and
  • Nokia was aware of, and impliedly consented to, the repackaging of the seized products by the initial supplier (the Hong Kong-based manufacturer), since Nokia accessories are not marketed in bulk in Greece.  
In response, Nokia Corporation argued that:
  • Under Article 2(1)(a)(i) of the regulation, 'counterfeit goods' are defined as any goods, “including packaging”, bearing without authorisation a trademark identical to a trademark validly registered in respect of the same type of goods.
  • It was not aware of, and had never consented to, the repackaging of its mobile phone accessories in counterfeit packaging. The fact that some Nokia products are marketed in bulk in other countries did not mean that Nokia Corporation consented to counterfeit packaging being made and used by third parties without its knowledge or consent.
  • The genuine products originated from Hong Kong, a country outside of the European Union. Therefore, the case law of the ECJ on repackaging did not apply, since there was no effect on intra-community trade.
The Athens Court of First Instance ruled that the packaging at issue was a counterfeit product within the meaning of the regulation, and issued an injunction preventing the defendant from importing genuine Nokia products in counterfeit packaging. Finally, it ordered the destruction of the counterfeit packaging.
 
The court also addressed the defendant’s allegations about lawful repackaging. It held that repackaging without the trademark owner’s licence or consent violates the ‘guarantee function’ of the trademark, under which the trademark owner has the right to control the way in which its products are presented to the market. Any third-party acts interfering with the packaging of the product without the trademark owner’s knowledge amounts to trademark infringement. Interestingly, the court referred to the conditions for repackaging set forth by the ECJ in Loendersloot, even though the case did not involve intra-community trade. In particular, the court ruled that:
  • the packaging did not bear the name of the repackager; and
  • the defendant had neither given prior notice to Nokia nor had it received Nokia’s consent.
No appeal has been filed, so the decision is now final. The decision provides a 'pro-trademark owner' solution to a longstanding dispute over the application of the regulation by the Greek customs authorities to stop the importation of products in counterfeit packaging.

Maria H Vasilikopoulou, Dontas Law Offices, Athens

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