BMM Bulletin 3-4/2013, p. 135-141, Frank Eijsvogels: "The justified concern of trade mark proprietors that the new Customs Regulation has even further reduced the ability to effectively prevent the entry of counterfeit goods in the EU may be removed when reading the proposals of the Commission for a new trade mark package. In response to the strong criticism from stakeholders against the implications of the Philips/Nokia judgment as placing an inappropriately high burden of proof on right-holders, and hindering the fight against counterfeiting, the Commission proposes to give trade mark proprietors the right to effectively prohibit the transit of goods in certain circumstances. See e.g. Article 10 (5) of the proposed new harmonisation directive:‘The proprietor of a registered trade mark shall also be entitled to prevent all third parties from bringing goods, in the context of commercial activity, into the customs territory of the Member State where the trade mark is registered without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorization a trade mark which is identical to the trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark.’
It is not surprising that the proposals have been welcomed by amongst others organisations that represent the interests of trade mark proprietors. The effect of this provision (the transit provision) may be that with respect to goods in transit in the Netherlands or in any other Member State of the EU coming from outside the EU which bear without authorization a trade mark which is identical to the trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark (the goods which currently fall within the scope of Article 5 (1)(a) of Directive 2008/95 and of Article 9 (1)(a) of Regulation 207/2009), the same material result can be obtained as in the period that Dutch Courts applied the ‘manufacturing fiction’ in cases under the current and previous version of the Customs Regulation. These transit goods can be regarded as ‘counterfeit goods’ and as ‘goods suspected of infringing an intellectual property right’ in the country where these goods are found by customs in the given circumstances and, once the competent Court has confirmed that these goods are ‘counterfeit goods’, can be destroyed...
It is not surprising that the proposals have been welcomed by amongst others organisations that represent the interests of trade mark proprietors. The effect of this provision (the transit provision) may be that with respect to goods in transit in the Netherlands or in any other Member State of the EU coming from outside the EU which bear without authorization a trade mark which is identical to the trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark (the goods which currently fall within the scope of Article 5 (1)(a) of Directive 2008/95 and of Article 9 (1)(a) of Regulation 207/2009), the same material result can be obtained as in the period that Dutch Courts applied the ‘manufacturing fiction’ in cases under the current and previous version of the Customs Regulation. These transit goods can be regarded as ‘counterfeit goods’ and as ‘goods suspected of infringing an intellectual property right’ in the country where these goods are found by customs in the given circumstances and, once the competent Court has confirmed that these goods are ‘counterfeit goods’, can be destroyed...