April 25, 2019

The Supreme Court of Finland has made a rare request for preliminary ruling to refer a trademark dispute over ball bearings to the Court of Justice of the European Union. Kolster Partner, Jani Kaulo, is acting on behalf of the trademark owner, Schaeffler Technologies GmbH & Co.  Kg. Ina.

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The trademark dispute over counterfeit ball bearings carrying with the INA trademark began in 2011, when a shipment of counterfeit goods arrived in Finland from China. The ball bearings are intended for use, for example, in bridge building and trams. The recipient of the counterfeit bearings stored them at his home address before delivering them to Russia in small batches. The injured party demanded that the defendant be punished for an industrial property crime and convicted of trademark infringement.

The case is important in drawing a line between what can be deemed the use of a trademark for business purposes and what can be viewed as shipping and warehousing operations, when interpreting the regulations set by the legislation on trademark infringements. The matter has already been addressed in the Helsinki District Court and the Finnish Court of Appeal, and will now be advanced to the Court of Justice of the European Union. Following this stage of the proceedings, the Supreme Court of Finland will pass judgement on the matter on the basis of the preliminary ruling.

Kolster Partner, Jani Kaulo, is acting as legal counsel on behalf of the German trademark owner.

I very much look forward that the Court of Justice of the European Union will soon deliver a preliminary ruling on this case, which will be significant for trademark owners around the world. This ruling will shape the way legislation is applied in similar trademark disputes across the whole European Union, says Jani Kaulo.

Counterfeit ball bearings shipped to Russia via Finland

The injured party demanded that the defendant be punished for an intellectual property offence and convicted of trademark infringement. The District Court of Helsinki dismissed the criminal charges in the case, but found the defendant guilty of trademark infringement. The defendant referred the judgement on trademark infringement to the Helsinki Court of Appeal, which overturned the decision of the District Court.

Trademark owner sought a leave to appeal to the Supreme Court against the ruling of the Helsinki Court of Appeal, which was then granted in December 2017.

If the decision of the Court of Appeal had remained in force, it would have legalised the use of so-called front organisations to ship counterfeit products to Russia via Finland, states Jani Kaulo.

In the view of the Supreme Court of Finland, the case centres on the issue of whether the recipient of counterfeit goods, and the person who then stored these items before forwarding them, infringed a trademark right and, therefore, became liable to compensate and pay damages to the trademark owner.

The EU Court of Justice decision will shape interpretation of the law throughout Europe

At the request of the national courts of EU member states, the European Court of Justice gives preliminary rulings on the correct interpretation of European Union law. A preliminary ruling must be complied with when a case is referred to the national court in which the request for the ruling was made. In future, all national courts in the EU will be bound by the preliminary ruling. Requests for a preliminary ruling are rarely made. Last year, the Supreme Court of Finland only made two requests for preliminary rulings from the European Court of Justice. 

In addition to the disputing parties, EU member states, the European Commission, and, where necessary, the European Parliament, the Council of Europe, and the European Central Bank, have the right to submit remarks to the European Court of Justice.

– The forthcoming preliminary ruling will be significant for all global trademark owners, as it determines the interpretation of the EU law. We expect the European Court of Justice to give a preliminary ruling this year, Jani Kaulo notes.


Read also about Kolster Market Watch™ , our service against counterfeit goods. 

 Contact us

Jani Kaulo
jani.kaulo@kolster.fi
+358 40 6375442

By Kolster

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