Appeal court confirms Braun's victory against importer of fake 'Brown' goods
The Appellate Court of Tirana has rejected an appeal lodged by an Albanian importer of epilators bearing the mark BROWN and upheld the decision of the First Instance Court of Tirana in favour of Braun GmbH, a well-known manufacturer and seller of small electrical appliances. Braun argued that the defendant’s product design infringed its well-known trademark BRAUN.
The case addressed the issue of whether, under the Albanian Customs Regulation, the Albanian customs authorities can intercept and subsequently seize goods bearing marks that are confusingly similar to registered trademarks.
In November 2013 Albanian Customs detained a consignment of goods consisting of epilators bearing the mark BROWN, depicted below, which originated from China and were intended for the Albanian market.
Guided by the risk that the epilators might infringe the IP rights of Braun, the customs authorities informed the brand owner of the detention. Braun is the holder of a customs watch application for the stylized mark BRAUN, depicted below, approved by Albanian Customs in 2011.
Braun determined that the BROWN-branded goods were not genuine and forwarded this assessment to Customs, expressing its willingness to destroy the goods through the simplified procedure.
The Albanian importer contested the destruction of the goods, arguing that they did not fall under the category of 'counterfeit goods', as the marks were not identical. The defendant argued that the customs authorities should intervene in cases involving identical marks, or when the marks/goods are extremely similar, but not in cases where certain similarities may cause a likelihood of confusion. The importer thus asked Customs to release the goods.
The customs authorities found the importer’s request to be groundless, did not release the seized goods and informed Braun of the importer’s arguments. In December 2013 Braun lodged a civil claim before the First Instance Court, asking the court to order the destruction of the goods and to direct the defendant to pay all costs incurred for keeping the goods under customs control.
One of the most interesting conclusions made by both instances was related to the definition of 'counterfeit goods'. After carefully analysing the definition of 'counterfeit goods' set forth in the EU Customs Regulation (1383/2003) – the Albanian Customs Regulation has fully transposed Regulation 1383/2003 concerning the customs watch procedure, including the legal definitions regarding counterfeits – and in the Industrial Property Law, the courts ruled that, in assessing whether the goods were counterfeit, the provisions of the Industrial Property Law, under which confusingly similar goods can be considered infringing, should be taken into consideration.
Furthermore, both courts found the contested goods/mark to be confusingly similar to the BRAUN mark, and thus accepted Braun's claims in their entirety.
The ruling clarifies the extent of Albanian Customs’ authority to inspect and detain goods suspected of infringing trademark rights. It expands the definition of 'counterfeit goods', allowing and obliging the customs authorities to intervene even in cases involving confusingly similar marks. It represents a step forward in Albanian case law, as it facilitates the enforcement of trademark rights in Albania.
It is not known whether the defendant will appeal the decision before the Supreme Court.
Irma Cami, PETOŠEVIĆ, Tirana
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