UK could become key counterfeit route after trademark ruling

Aug 14, 2009
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While endearingly janky devices like the Nokla E97 aren't usually to be found on Western shelves, that could change thanks to a key High Court ruling in the UK.  The case had been brought by Nokia, who alleged that Her Majesty's Revenue & Customs (HMRC) in the UK had acted unfairly when allowing a shipment of counterfeit goods bearing Nokia's trademarks free passage through the country after discovering they were not intended for sale there.

In fact, HMRC decided that, since a UK trademark would require an intention of trading, items not headed for UK shelves could not be seized.  The shipment was allowed to continue on its way to Columbia, and Nokia brought the case before the High Court arguing that HMRC had interpreted the Counterfeit Goods Regulations in an "unduly restrictive" manner.

The courts decision in favor of HMRC was tempered by the judge's admission that the situation took advantage of a legal loophole, and that he hoped it would be closed as soon as possible.  Nonetheless, trademark attorneys are already suggesting that the ruling places unfair burden on trade mark owners, and potentially positions the UK as a "safe passage" route for counterfeit goods:

"In addition, the ruling raises real concerns that the UK could be viewed as a 'safe passage' by counterfeiters seeking to transit Europe en route to their trading destination. Clearly, this poses a significant threat for trade mark owners globally" Tania Clark, trade mark attorney, Withers & Rogers LLP


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