Decision clarifies scope of Customs' authority to seize and detain suspected infringing goods

The First Instance Court of Tirana has issued a highly anticipated decision in a case initiated by Braun GmbH, one of the world’s leading manufacturers and sellers of small electrical appliances. The case addressed the issue of whether, under the Albanian Customs Regulation, the Albanian customs authorities can intercept and seize goods bearing marks that are confusingly similar to registered trademarks.

It should be noted that the Albanian legal system has fully transposed the EU Customs Regulation (1383/2003), including its legal definitions regarding counterfeits.

In November 2013 Albanian Customs detained a consignment 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 goods 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 BRAUN stylised mark, depicted below, approved by Albanian Customs in 2011.

Braun determined that the BROWN-branded goods were not genuine and forwarded this assessment to the customs authorities; it also expressed its willingness to destroy the goods through the simplified procedure.

The importer, an Albanian entity, contested the destruction of the goods, arguing that the latter did not fall under the category of 'counterfeit goods', as the marks were not identical.

The defendant referred to the definition of 'counterfeit goods' in the Albanian Customs Regulation, which provides that “counterfeit goods that are... goods, including packaging, bearing without authorisation a trademark identical to a trademark validly registered in respect of the same type of goods, or which cannot be distinguished in its essential aspects from such a trademark”.

The defendant argued that the customs authorities should intervene in cases where the marks are identical, or where the marks/goods are highly similar, but not in cases when certain similarities may create a likelihood of confusion, as both Customs and the brand owner argued. 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. 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.

The court first analysed whether the marks/goods fell within the definition of 'counterfeit'. It ruled that, when assessing whether the goods are counterfeit, it should take into consideration the provisions of the Industrial Property Law, which state that confusingly similar goods can be considered to be infringing. The court thus upheld the plaintiff’s arguments in their entirety and concluded that the goods were counterfeit.

This decision 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. This represents a step forward in Albanian case law, as fighting the infringement of IP rights remains one of the biggest challenges in the country. Trademark practitioners have largely welcomed the decision, as it facilitates the enforcement of trademark rights.

The defendant has appealed the decision to the Appellate Court of Tirana.

Irma Cami, PETOŠEVIĆ, Tirana