Request to Lift Seizure of Philip Morris Tobacco Sticks in Transit Gone Up in Smoke
By Gie van den Broek
Lawyer, LXA The Law Firm
Gie is a Lawyer at LXA. He has extensive legal experience in the areas of corporate law, (commercial) contracts, in particular franchising, licensing and sponsorship agreements and general contract law. Gie is a specialist in trademark protection and anti-counterfeiting. He is a strong negotiator, and has gained experience in IP litigation against infringers.
In the first example of Article 9 par. 4 of the EU Trademark Regulation being applied in a Dutch Court, tobacco manufacturer Philip Morris prevented a consignment of its products being marketed and sold outside of an authorized market by a wholesaler. Read the key summary and learn the outcome of the case below.
- Recently, Philip Morris (PM) seized a container of its original branded tobacco sticks on a cargo ship because it was suspected the goods were going to be sold outside of an authorized market (Armenia)
- The owner of the container – Dutch wholesaler ‘RPM’ – filed a request to Court to lift the seizure of the goods. The destination of the goods, as confirmed by Philip Morris, was Armenia.
- However, it was the dubious route the tobacco sticks had travelled and suspect documents that raised the alarm.
- The Court held that Philip Morris’ fear is justified that the consignment is ultimately intended, without Philip Morris’ consent, to be marketed elsewhere, resulting in infringement. The goods remain seized.
- This case is the first time a Dutch Court applies the rule of Article 9 par. 4 of the Trademark Regulation that came into force three years ago.
In a preliminary Court decision the Court of Rotterdam ruled on October 19, 2020 in favor of Philip Morris in a ‘goods-in-transit’-case.
The EU Trademark Regulation (Reg. 2017/1001) which entered into force in October 2017 rules in Article 9 par. 4.
Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall also be entitled to prevent all third parties from bringing goods, in the course of trade, into the Union without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorisation a trade mark which is identical with the EU trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark.
This article was applied correctly by the Court in Rotterdam on October 19, 2020 in a tobacco case, where goods were physically in a Customs warehouse in the Netherlands, but PM found out in time that something was seriously wrong.
RPM is a Dutch wholesaler of, among other things, cigarettes, liqueurs and medical devices. Philip Morris (PM, the tobacco manufacturer) seized a container of tobacco sticks – original branded goods from Philip Morris – on a cargo ship bound for the Philippines. RPM filed a request to Court to lift the seizure of the goods stored under T-1 status (Custom status of goods in transit bound for release outside the EU). The destination of the goods, as confirmed by PM was Armenia. PM pointed out that the goods could not be marketed anywhere else than in Armenia. However, RPM did not want to cooperate with transport to Armenia. PM pointed to the dubious route the tobacco sticks have travelled so far and more specifically to facts and circumstances surrounding the consignment’s transport to the Philippines. In addition, PM pointed to flaws in the documents. The suspect documents raised doubts about RPM’s assertion that it owns the lot and that the lot indeed has T-1 status. The Court held that it PM’s fear is justified that the consignment is ultimately intended, without PM’s consent, to be marketed elsewhere, resulting in infringing acts. RPM’s course of action throughout the proceedings contributed to this judgment. RPM’s claim is dismissed. The goods remain seized.
This case is the first time a Dutch Court applies the rule of Article 9 par. 4 of the Trademark Regulation that came into force three years ago, which enables Customs to also act against fraudulent goods in transit not intended for the EU but for non-EU countries.
RPM was sentenced to bear all legal costs on the side of PM, exceeding 12,000 euro. And this is only the beginning. It is the refusal of the Court to lift the seizure. Litigation on the merits of the cases will follow. To be continued.
Access the original article here
LXA works for entrepreneurs, enterprises, and investors and specializes in copyright law, designs and models law, trademark law and anti-counterfeiting.
Established in 2011, LXA has seen continued growth and now numbers over 40 dedicated professionals across offices in Amsterdam, Den Bosch and Eindhoven.
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