About the Ubiquity Criterion and the International Jurisdiction on Matters Relating to Seizure of Counterfeit Goods in Customs
Let´s imagine a case, one of many others, in which products coming from outside the European Union enter the common market through Member State A having as final destination Member State B.
Let´s also imagine that the products at issue are counterfeits.
In such a scenario, and having detected the counterfeit goods at the Customs of A, would the courts of such place have jurisdiction to hear the criminal proceeding brought by a trademark holder? Or, on the contrary, would the courts of the final destination, that is, the courts of Member State B, have jurisdiction?
Over this question, the Appeal Court of Valencia has recently passed the Court Order No. 191/2016 of February 15.
This matter arises from the import from China of a total of 2.494 fake perfumes with final destination in Essex (United Kingdom) which was seized at the port of Valencia. After having confirmed the illicit nature of these products, PARFUMS CHRISTIAN DIOR S.A.-represented by our Law Firm- filed the corresponding complaint based on an alleged offence against intellectual property.
The Criminal Court No.8 of Valencia understood that it did not have jurisdiction to deal with the case. As the goods were meant to reach the United Kingdom as final destination, only the English Courts would have jurisdiction.
The trademark holder appealed the decision. Following the observations filed, the Appeal Court revoked the decision and declared that “the Courts of Valencia would have jurisdiction because the effects of the alleged offence are located in [the territory of Valencia (Spain)], regardless of the final destination (United Kingdom) and origin (China) of the merchandise”.
This reasoning is mainly based on the ubiquity criterion stated in an Opinion of the Supreme Court Chamber gathered in plenary session on 3 February 2005 (text in Spanish) according to which all those courts on whose territory any of the elements of the illicit action has been developed have jurisdiction to know of the proceeding.
We deem that the conclusions drawn by the Court are correct and make easier for trademark holders to enforce their exclusive rights since they are allowed to bring actions at the very same moment that the infringing goods are located.
Related Posts:
- On the Different Interpretation of Forum Delicti Commissi in Relation to EU Trademarks and National Trademarks
- CJEU Judgement “Wintersteiger”: useful criteria to determine jurisdiction in Internet-related IP disputes
- Is the use of a Community trademark in more than one Member State necessary to consider that there is genuine use?
- Jugdement of the General Court on “3D eXam”: the extension of protection of international trademarks