Re Montres Rolex SA

Date

7 January 2004

Legislation

Regulations 3595/94, 241/99
European Convention on Human Rights, Art. 7

Keywords

counterfeiting; customs; seizure; human rights; retroactive criminal sanctions; goods in transit; implementation

Counsel

G. Kucsko, C. Pesendofer, E. Bygglin, J.C. Schieferer

Solicitors:

unknown

Judge:

D.A.O. Edward (Rapporteur), A. La Pergola, P. Jann.

Court:

European Court of Justice

Reported:

Case C-60/02; [2004] ECR I-651; [2004] ETMR 37

Summary:

The Austrian Regional Court referred to the ECJ various questions about the interpretation of Regulation 3595/94 which contains measures concerning the entry into the community and the export and re-export from the community of goods infringing certain intellectual property rights.

The questions arose in the context of a number of judicial investigations requested by Rolex, Tommy Hilfiger, Lacoste, Gucci, and GAP, all of whom were trade mark proprietors, following the confiscation of counterfeit goods by the Austrian customs authorities.

Article 1 of the Regulation provides that the customs authorities of Member States shall take action where goods are suspected of infringing an intellectual property right where the goods are entered for free circulation or found in the course of checks on the goods. Article 3 provides among other things that a trade mark proprietor may lodge an application in writing with customs authorities for action in relation to goods suspected to be counterfeit.

Rolex alleged that its trade mark rights were infringed by unidentified persons seeking to transport 19 counterfeit watches from Italy to Poland via Austria. It requested the Austrian Regional Court to open a judicial investigation against those persons in respect of the alleged counterfeiting. The other brand owners had similar requests relating to other counterfeit goods. An issue arose over the extent to which Austrian national law had correctly implemented the Regulation.

Decision:

• Article 1 of the Regulation is applicable where goods imported from a nonmember country are in the course of their transit to another non-member
  
  
• country, are temporarily detained in a Member State by the customs authorities of that state;
  
  
• Article 11 of the Regulation requires member states to introduce penalties for infringements of the prohibition against release for free circulation, export, reexport etc.
  
  
• The scope of the penalties is not conditional upon the type of national proceedings (civil, criminal or administrative), however
  
  
• If the Austrian national laws are inconsistent with the requirements of the Regulation, then the penalties required by the Regulation must be given effect notwithstanding the national law;
  
  
• If the Austrian court reaches the conclusion that their national law does not prohibit the transit of counterfeit goods across the Austrian territory, the principle of non-retroactivity of penalties contained in Art. 7 of the European Convention of Human Rights would prohibit the imposition of criminal penalties for such conduct, even if the national rule were contrary to Community law.

Leaving aside issues relating to whether Austrian law had been correctly implemented, this case is of significance for two findings: that the Regulation is applicable where goods are in the course of transit through a member state, and the relationship between ECHR Art 7 and criminal sanctions for counterfeiting. The consequence of the latter is that, although Regulations usually take effect automatically in each Member State, where some implementation into national law is required (as in this case), it is not open to a Member State to retrospectively create criminal sanctions if none existed at the time of the alleged offence.