The amount of compensation received by an individual who imports products that infringe a trademark on behalf of a third party is irrelevant when determining whether or not infringement has occurred.
Judgment of the Court of Justice of April 30, 2020, in Case C‑772/18, INA Case
Company “A” is the owner of international trademark No. 709,735, “INA,” designating Finland. An individual (“B”) received a shipment of products (bearings) bearing the INA trademark from China at the Helsinki airport. “B” subsequently stored the products, which were then transported (apparently by a third party) to Russia. As compensation for his services, “B” received a carton of cigarettes and a bottle of cognac.
The Prosecutor’s Office filed a criminal complaint regarding this matter, arguing that “B,” through the importation of these counterfeit products, had infringed upon the INA trademark. Company “A” joined the complaint, seeking compensation for damages and an injunction prohibiting “B” from continuing to import the counterfeit products. The Court dismissed the criminal complaint, finding that “B’s” intent in committing the offense had not been proven. However, it granted “A’s” request for an import ban and compensation; nevertheless, it reduced the amount to be paid by “B” to one-third, based on “B’s” particular circumstances.
The criminal case was dismissed. However, both parties appealed the court’s decision regarding the claim for damages. The Court of Appeals granted “B’s” appeal and exempted him from paying the damages. The Court found that “B” had merely received the goods on consignment, had no intent to make a profit in the context of a commercial activity, and had not used the infringing trademark in the course of trade.
Company “A” filed an appeal with the Supreme Court, which stayed the proceedings and raised several preliminary questions that the Court of Justice consolidated into a single one.
Click here to view the opinion on the preliminary ruling and the court's response.
Author: Jesús Gómez Montero
Former Partner at ELZABURU and Member of the Advisory Committee of the Alberto Elzaburu Foundation