The European Union Parliament has approved new laws to update the EU’s trademark system, although the changes still need to be approved by the Council of the European Union.
The new laws include both administrative changes and substantive improvements designed to block shipments of counterfeit goods via the 28 member states.
The new anti-counterfeiting rules would allow customs officials in European countries to stop counterfeit goods in transit, even though the goods were not being sold within Europe.
Rulings by the Court of Justice of the European Union had held that customs officials could only inspect and identify counterfeit goods but could not stop them from being shipped unless there was evidence that the goods would be sold within Europe.
Under the new rules, trademark owners would still need to show that their marks were valid in the country that was the original destination for the goods.
A study by the US Patent and Trademark Office found that only 15% of owners of American small-to-medium businesses realized that their US trademarks did not protect them internationally.
The International Trademark Association recommends that US trademark owners also seek trademark protection in countries where:
- Their products or parts are manufactured,
- Their products are sold,
- Their products pass through during shipping,
- They plan to do business in the future, and/or
- Counterfeiting is a likely risk.
Another change in the EU law would allow trademark owners to prevent the import of even small shipments of counterfeit goods by consumers for non-commercial purposes.
US law continues to have a “personal use exemption” for counterfeit goods:
Passengers arriving into the United States are permitted to import one article, which must accompany the person, bearing a counterfeit, confusingly similar or restricted gray market trademark, provided that the article is for personal use and is not for sale. This exception may be granted not more than once every thirty days. The arriving passenger may retain one article of each type accompanying the person. For example, an arriving person who has three purses, whether each bears a different infringing trademark, or whether all three bear the same infringing trademark, is permitted one purse.