The CJEU has ruled that for the purposes of Customs Regulation (EC) No 1383/2003, goods sold to a resident of a Member State from a website based in a non-Member State may be infringing merely by virtue of the sale, even if those goods were not the subject of an offer for sale or advertising targeted at consumers of that Member State prior to the sale.
In January 2010, Mr Blomqvist, a resident of Denmark, ordered a watch described as a Rolex from a Chinese website. The order was placed and paid for through the English language website of the seller and the watch was then sent by the seller from Hong Kong by post.
When the parcel arrived in Denmark, customs authorities inspected it and, suspecting that it was counterfeit, suspended customs clearance. In accordance with the procedure laid down by the Customs Regulation, Rolex confirmed that the watch was counterfeit, requested the continued suspension of customs clearance and asked Mr Blomqvist to consent to the destruction of the watch. Mr Blomqvist refused. Rolex brought a successful action before the Maritime and Commercial Court in Denmark, which ordered Mr Blomqvist to allow the destruction of the watch.
Mr Blomqvist appealed. The Supreme Court noted that in order for the Customs Regulation to take effect, there must have been a breach of a copyright or trade mark right protected in the Member State in which the goods were seized, with the alleged breach taking place in that same Member State. Mr Blomqvist had purchased the watch for personal use and thus had not himself breached Danish copyright or trade mark law. The Supreme Court therefore asked the CJEU whether the sale and dispatch of the watch to a private purchaser with an address in Denmark known to the vendor had been a 'distribution to the public' under Article 4(1) of the Copyright Directive or '[use] in the course of trade' under Article 5(1) and (3) of the Trade Marks Directive or Article 9(1) and (2) of the CTM Regulation. It also asked whether, prior to the sale, the watch must have been the subject of an offer for sale or advertising targeting consumers in the Member State in question.
The CJEU held that for the purposes of the Copyright Directive, 'distribution to the public' must be considered proven where a contract of sale and dispatch to a member of the public has been concluded. This series of acts also constitutes '[use] in the course of trade' within the meaning of the CTM Regulation.
It was not disputed that Rolex:
- held copyright and trade mark rights in Denmark and that the watch constituted a 'counterfeit' and 'pirated' good within the meaning of Article 2(1)(a) and (b) of the Customs Regulation; and
- would have been entitled to claim infringement of its rights if the watch had been offered for sale by a trader based in a Member State, since this would have constituted a 'distribution to the public' and '[use] in the course of trade'.
Therefore, in order to reply to the questions referred by the Danish Supreme Court, the CJEU had to consider whether Rolex could claim the same protection for its rights where the goods at issue were sold on a website based in a non-Member State on whose territory that protection was not applicable.
The CJEU confirmed that the mere fact that a website can be accessed in a territory covered by a trade mark is not a sufficient basis for concluding that offers for sale displayed on that website are targeted at consumers in that territory (L'Oreal and Others  C-324/09 applied). However, rights may be infringed where, prior to their arrival in the territory covered by that protection, goods coming from the non-Member State are the subject of a commercial act directed at consumers in that territory, such as a sale, offer for sale or advertising (Philips  joined cases C-446/09 and C-495/09 applied).
In the circumstances of the case it was not necessary to determine whether prior to the sale those goods had been the subject of an offer for sale or advertising targeted at consumers in the EU.
This decision will be welcomed by rights owners, but its broader significance will be debated. Some may see it as at odds with the CJEU's approach in recent references with regard to online copyright and trade mark infringement (where the analysis has typically been based on whether the website is 'targeting' the jurisdiction in question). Others may see this case as addressing a different situation, in which it is unsurprising that a vendor who sells and dispatches a physical product to a customer known to be located in an EU country is held to infringe.