Today, consumers in the EU are able to purchase counterfeit and pirated goods directly from sellers in non-EU member states (e.g. in Asia) that send the goods in small consignments, typically by post, directly to the EU consumers. This provides a challenge to right holders because, unlike commercial importers of counterfeit and pirated goods, a consumer who imports such goods for his or her private use does not infringe any intellectual property rights (IPR). This article discusses how and to what extent right holders may nonetheless use the Customs Regulation to enforce their IPR against private imports. After having dismissed the so-called “manufacturing fiction” following the decision of the ECJ in Philips/Nokia the article elaborates on an alternative method which is called the “infringing sale of goods-“approach and which may find support in the ECJ decision in L'Oréal and possibly also in the recent Opinion from the Advocate General in Donner. The authors conclude that the ECJ will presumably bring around some clarification when it hands down its judgment in Donner. If the Court adopts the infringing sale of goods approach, it is argued that this would produce political controversial results and distort traditional intellectual property law thinking.
Journal of Intellectual Property Law and Practice, 2012, Vol 7, Issue 10, p. 747-762