BMM Bulletin 3-4/2013, p. 142-149, Henning Grosse Ruse-Khan: "This contribution has attempted to provide an international trade law perspective on the question of applying border measures to goods in transit which potentially infringe IP rights in the transit country. Against the context of the dispute evolving around the seizure of generics in transit through the EU, it has focused on the trade implications of the proposed expansion of trademark rights to cover the mere transit – without any threat of diversion to the market of the transit country – as an infringement. Essentially, this type of expanded IP protection is likely to create barriers to trade in a way that is not consistent with obligations WTO members have under Art.V GATT to ensure freedom of transit. These inconsistencies are also not likely to be justified under the general exception rule in Art.XX (d) GATT which allows trade barriers that are necessary to enforce GATT-compliant IP laws. Expanding IP rights to cover the mere transit is not mandated under TRIPS and appears as such to be a violation of the freedom of transit rule. Furthermore, it seems to interfere with the harmonious co-existence of trademark rights vesting in the same signs for the same type of goods or services in different jurisdictions. If the EU lawmakers go ahead with this proposal, they are de facto exporting territorially limited trademark rights in the EU to other importing and exporting countries. This may also affect the EU as transit hub.
On the other hand, international trade law arguably does not prohibit border measures against goods in transit where there are reasonable grounds for suspecting that these goods will be diverted to the domestic market of the transit country and thereby infringe IP rights – other than those extended to cover the mere transit – in that country. Even if one considers these types of seizures based on criteria along the lines of the CJEU decision in Philips/Nokia to be possibly still inconsistent with Art.V GATT, good arguments would support them to be justified under Art.XX (d) GATT. In the end, this shows that international trade law is able to accommodate the interests and objectives of IP protection and enforcement – but is equally serving as safeguard against an IP ‘overreach’ which is not concerned with the interests and objectives of the international trading system...
On the other hand, international trade law arguably does not prohibit border measures against goods in transit where there are reasonable grounds for suspecting that these goods will be diverted to the domestic market of the transit country and thereby infringe IP rights – other than those extended to cover the mere transit – in that country. Even if one considers these types of seizures based on criteria along the lines of the CJEU decision in Philips/Nokia to be possibly still inconsistent with Art.V GATT, good arguments would support them to be justified under Art.XX (d) GATT. In the end, this shows that international trade law is able to accommodate the interests and objectives of IP protection and enforcement – but is equally serving as safeguard against an IP ‘overreach’ which is not concerned with the interests and objectives of the international trading system...
