The case: A Danish consumer bought a watch for 365 USD from the English online sales website of a Chinese retailer. The watch was described as “Rolex GMT Master II 50th with Asian 3186 Movement”. This watch was sent to him from Hong Kong. On its arrival in Denmark, however, the customs authorities checked the consignment, suspecting that it was a counterfeit product because of an imitation of the watch “Rolex GMT Master II”:
The customs authorities suspended the release of the watch and informed Rolex and the Danish consumer. The Rolex test showed that the watch was indeed a counterfeit.
Rolex is, inter alia, the proprietor of the Union trade marks ROLEX and GMT-MASTER and also of figurative marks consisting of a five-pointed crown with a ball on the top of that crown and the indication ROLEX respectively. Under the procedure laid down in the Customs Regulation, Rolex applied for further suspension of release and due to a trademark and copyright infringement asked the consumer to consent to the destruction of his watch by the customs authorities.
The consumer did not agree. He had only wanted to test the watch before investing in a real Rolex. The European Court of Justice however ruled in favour of Rolex. It is true that the consumer had bought the watch only for his private use. He therefore did not infringe any trade mark or copyright belonging to Rolex. However, the Chinese retailer had offered the counterfeit product to customers in the European Union, promoted the counterfeit product in the European Union and also sold it to European Union consumers. These acts infringed Rolex’s trade mark and copyright rights in the European Union. Whether the sale of the watch was allowed in China, on the other hand, did not matter.
The customer had to consent to the destruction of the watch already paid for without any compensation- He was forced to assert claims against his seller in Hong Kong, EJC, 6 February 2014, C-98/13.
Learnings: Buying a counterfeit product in an online shop from a third country outside the European Economic Area is not a good idea. Any customer who purchases a counterfeit product for his private use through a website in a country outside the European Economic Area runs the risk of having to agree to the destruction of these goods.