After its withholding of mere accessibility of a site as a jurisdictional trigger for copyright infringement in Pinckney, the ECJ has now accepted that the mere acquisition of a good by a person domiciled in an EU Member State, suffices to trigger the application of the EU Customs Regulation’s provisions on counterfeit and pirated goods. It is not necessary, in addition, for the goods at issue to have been the subject, prior to the sale, of an offer for sale or advertising targeting consumers of that State.
In Case C-98/13 Martin Blomqvist v Rolex Mr Blomqvist, a resident of Denmark, ordered a watch described as a Rolex from a Chinese on-line shop. The order was placed and paid for through the English website of the seller. The seller sent the watch from Hong Kong by post. The parcel was inspected by the customs authorities on arrival in Denmark. They suspended the customs clearance of the watch, suspecting that it was a counterfeit version of the original Rolex watch and that there had been a breach of copyright over the model concerned. In accordance with the procedure laid down by the customs regulation, Rolex then requested the continued suspension of customs clearance, having established that the watch was in fact counterfeit, and asked Mr Blomqvist to consent to the destruction of the watch by the customs authorities. Mr Blomqvist refused to consent to the destruction of the watch, contending that he had purchased it legally. Is there in the present case any distribution to the public, within the meaning of the copyright directive, and any use in the course of trade, within the meaning of the trade mark directive and the trade mark regulation?
The ECJ re-iterated earlier case-law (in particular L’Oreal /E-bay) that the mere fact that a website is accessible from the territory covered by the trade mark is not a sufficient basis for concluding that the offers for sale displayed there are targeted at consumers in the EU. However proof that the goods are intended to be put on sale in the European Union, is being provided, inter alia, where it turns out that the goods have been sold to a customer in the European Union, such as clearly in the case at issue.
That sales to the EU have taken place is enough. Proof that EU consumers were actually targeted is not required – at least not with a view to triggering intellectual property protection (cf consumer protection under i.a. the jurisdiction Regulation).
In the view of the EU of course this is not an ‘extraterritorial’ application of EU law: the territorial link is firmly established through the customer’s domicile.
(Postscript April 2015: The ECJ confirmed these principles in C-295/13, H v HK).
Less is more, I know – Apologies for the long title and thank you to Matthias Storme for highlighting the case. In Case C-328/12 Ralph Schmid v Lilly Hertel, Schmid was the German liquidator of the debtor’s assets, appointed in the insolvency proceedings opened in her regard in Germany on 4 May 2007. The defendant, Ms Hertel, resides in Switzerland. Mr Schmid brought an action against Ms Hertel before the German courts to have a transaction set aside, seeking to recover EUR 8 015.08 plus interest as part of the debtor’s estate.
In Case C-339/07 Seagon the ECJ had ruled that the courts of the Member State within the territory of which insolvency proceedings have been opened have jurisdiction to decide an action to set a transaction aside (actio pauliana) that is brought against a person whose registered office is in another Member State. However does Seagon also apply where insolvency proceedings have been opened in a Member State, but the place of residence or registered office of the person against whom the action to have a transaction set aside is brought is not in a Member State, but in a third country?
The ECJ held that it does. Bob Wessels has a very good analysis here and I am happy to refer. Let me just add one or two things. The Brussels I Regulation, the overall Regulation on jurisdiction on civil and commercial matters, displays bias in favour of the defendant: actor sequitur forum rei. The overall jurisdictional angle of the Insolvency Regulation is different: avoiding forum shopping to the detriment of creditors is its main aim, and its insistence on verifiable and predictable criteria to determine COMI (which in turns determines jurisdiction) needs to be seen in that light. That non-EU domiciled defendants get caught up in EU proceedings on the basis of COMI is not generally seen as problematic within the context of the Regulation.
The ECJ is rather realistic with respect to the potential recognition and enforcement problems associated with judgments under the Regulation held against non-domicileds. In the absence of assets in the EU held by the non-dom (if there were, enforcement would be straightforward), classic bilateral treaties may come to the rescue and if there is no such treaty, so be it: the Regulation’s jurisdictional rules should not be held up by potential problems end of pipe.
An important judgment for the reach of the Insolvency Regulation.
When teaching International Environmental Law, I tend to at some point in the proceedings have the students ponder Lawrence Summers’ 1992 ‘Let them eat pollution‘ memo. It is a document most wonderful to teach basic economics, internalisation (or lack thereof) of externalities, morality in international trade, comparative advantage etc etc. As well as some history (remember Marie Antoinette, anyone?) and the myths surrounding quotes (qu’ils mangent de la brioche).
The EU have recently decided no longer to let developing countries recycle EU-registered ships through ‘beaching’: basically, one towes a discarded ship, typically with plenty of toxic substances on board or integrated in the ship’s build, unto a beach in a developing country, where subsequently the ship is dismantled without much regard to environmental control of occupational health and safety issues.
The long struggle to regulate the trade is a good example of the challenges of positive harmonisation in international environmental law. For instance, the definition of ‘waste’ as applied to a disused ship long differed between the EU (waste as soon as it is no longer used for its original purpose), the International maritime organisation (no waste as long as it can float) and the Basel Convention (reference to ‘discard’ and to national law). The 2009 Hong Kong Convention aims to address the challenges. This Convention has now been implemented by the EU, who have reportedly ‘gold plated’ it: i.e. the EU have gone beyond what is required under the Convention.
Some details of the scheme may be found here (Irish Presidency of the EU) – the text itself is not yet available. The regime uses a core element of the regime of the Basel Convention on the transboundary shipments of hazardous wastes and their disposal: i.e. employ export authorities in the ‘developed’ world, to only allow exports to ‘developing’ countries when conditions in the latter are deemed sufficiently safe from the workers’ and the environment’s point of view. In the case of the ship recycling regime, this is done by only allowing export of EU-flagged waste ships if they are to be dismantled in facilities that have been approved by the EU.
Plenty of complications remain: this includes the compatibility of the regime with the Basel Convention, and with international trade law; the problem of enforcement and inspection; and the possibility of circumvention by switching flag state.
Geert. Postscript July 2014: the Regulation was eventually adopted as Regulation 1257/2013.