The European Court of Justice, deciding on the case C-772/18, has established an important principle on the matter of a person buying counterfeit products.
The Court stated that the purchase of goods bearing a counterfeit trademark – clearly not for private use – must be regarded as “a use of the trade mark in the course of trade” in accordance to Article 5(1)(3) letter b) and c) of the directive 2018/95/CE, therefore being an illicit activity.
The ruling was issued during a case of trademark infringement between the company owner of the trademark and a Finnish private citizen that in 2011 received from China a consignment of 150 ball bearings for industrial use and who, after having completed customs clearance in his name, collected the consignment and took it to his home, but after a few weeks, he exported it to Russia in exchange of a remuneration.
On the goods under consideration was affixed a trade mark of the company which sued the Finnish buyer.
The Court decided that the Finnish citizen did not “use in the course of trade” the trademark in question and thus the claim for compensation could not be accepted.
After an appeal the case was referred to the Supreme Court of Finland which suspended the proceeding to submit it to the attention of the European Court of Justice, with respect to Article 5(1)(3) letter (b) and (c) of the directive 2018/95/CE.
The Court stated that the activity of “using in the course of trade” arise in the context of a trading business and only if the transactions carried out, by reason of their volume, their frequency or other characteristics, go beyond the scope of a private activity, whoever carries out those transactions is acting in the course of trade”.
Since the goods under consideration, due to their nature and their volume, do not seem intended exclusively for private use, the related transactions must be considered to fall within the scope of a trading business.
The fact that the Finnish private citizen has imported in his name and released for free circulation such goods with an active role (the custom clearance and exporting overseas) entails that the action falls within the meaning of Article 5(3)(c) of the directive 2018/95/CE. The extent of the remuneration is of no relevance.
In the light of what mentioned above, the CJEU stated that a person who does not engage in trade as an occupation but who takes delivery of, releases for free circulation in a Member State and retains goods that are manifestly not intended for private use, where those goods were sent to his/her address from a third country and where a trademark, without the consent of the proprietor of that trademark, is affixed to those goods, must be regarded as using that trademark “in the course of trade”, within the meaning of Article 5(1) of the directive 2018/95/CE.