R (Nokia) v Her Majesty’s Revenue & Customs

In a significant ruling Mr Justice Kitchin has held that Her Majesty’s Revenue & Customs (HMRC) did not have to seize allegedly counterfeit goods in transit through the EC. Mr Justice Kitchin, a specialist IP judge sitting in a judicial review transferred from the Administrative Court to the Chancery Division, agreed with HMRC that the EC Regulation providing customs authorities with powers and duties in respect of counterfeit goods did not empower or oblige HMRC to seize allegedly counterfeit goods (that is goods bearing trademarks without the consent of the trademark holder in the UK) in transit through the EC.  So long as such goods were not destined, legitimately or illegitimately for the EC market, he ruled that HMRC could not seize such goods as they were not technically “counterfeit” according to the definition employed and the related EC trademarks case-law of the ECJ.  The approach for goods allegedly infringing other IPR, such as copyright (‘pirated goods’), design rights etc remains to be determined by national law. Judgment was handed down on 27th July, 2009.

Thomas de la Mare appeared for the successful party, HMRC