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FSU College of Law, Business and Economics Paper

The decision by the ECJ in Philips/Nokia is welcome on a number of grounds. The Court affirmed that each country has the sovereign authority to make and apply IP rules for its own territory, and that applying IP rules governing the domestic market of transit countries would impair that authority. The Court rejected the production fiction approach that had been adopted by the Dutch Supreme Court, and advocated by Phillips and the Belgian government in the joined Philips/Nokia proceeding. Critically, the Court grounded its decision in the EC Treaty and the Treaty on the Functioning of the European Union (TFEU). The ECJ effectively acknowledged (though without expressly referring to it) Article V of the GATT regarding freedom of transit, and the role this provision plays in facilitating international trade. The ECJ reference to the TFEU constrains EU options in the context of present efforts to amend the EU IP Border Regulation.

The ECJ distinguished the level of proof or evidence that would justify seizure and temporary detention from the level of proof or evidence that is needed to establish infringement in a substantive enforcement proceeding. The types of evidence that may justify suspicion are broader than the concrete evidence that is needed to make out a case of infringement based on intention to divert. The ECJ placed a significant burden of proof on a right holder seeking the destruction or abandonment of goods “in transit” based on a substantive finding of infringement against the consignor/exporter of those goods. False transit must be proven with concrete evidence.