The matter at hand

Procter & Gamble is a producer of perfumery products and the exclusive licensee of the EU word mark HUGO BOSS. Perfumesco.pl, operates an online wholesale perfumery business.

Procter & Gamble seized from Perfumesco.pl, HUGO BOSS branded perfumes, including testers not intended for sale, products bearing codes indicating that they were intended by the manufacturer to be marketed outside the EEA, and products whose barcodes on the packaging had been removed or covered up. The seized products had not been placed on the EEA market by or with consent of the HUGO BOSS TMM. 

Procter & Gamble brought an action before the Sąd Okręgowy w Warszawie (Regional Court, Warsaw, Poland), which ordered Perfumesco.pl to destroy the perfumes, in particular testers, which had not been placed on the market in the EEA by HUGO BOSS TMM or with its consent and were, therefore, infringing intellectual property rights. The Sąd Apelacyjny w Warszawie (Court of Appeal, Warsaw, Poland) upheld this decision. The Court of Appeal relied in this respect on the general wording of Article 10(1) Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights when interpreting the relevant article in Polish law, which refers to “illegally manufactured or marked goods” (paragraph 11) instead of goods infringing intellectual property rights. The Court of Appeal considered that all goods infringing intellectual property rights had to be considered to be illegally manufactured within the meaning of Polish law.  

The referring court, having doubt whether a literal interpretation of the wording “illegally manufactured or marked goods” could be supported by Article 10(1) Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights as well, asked the ECJ whether Article 10(1) Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as precluding the interpretation of a provision of national law to the effect that a protective measure in the form of destruction of goods relates only to goods illegally manufactured or illegally marked, and cannot be applied to goods illegally placed on the market in the EEA, which cannot be found to have been illegally manufactured or illegally marked.

The judgment of the ECJ

The ECJ first notes that, to answer this question, the concept of ‘infringing an intellectual property right’, within the meaning of Article 10(1) Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, must be interpreted. In that regard it must be borne in mind that not only the wording of the provision of EU law should be considered but also its context, the objectives pursued by the measure of which it forms part and the legislative history of the provision. The ECJ refers in this regard to KRONE (C-65/20).

According to Article 10(1) Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, Member States are obliged “to ensure ‘that the competent judicial authorities may order, at the request of the applicant, that appropriate measures be taken with regard to goods that they have found to be infringing an intellectual property right’. Those measures include that laid down in Article 10(1)(c), namely the destruction of goods” (paragraph 40). The provision does not limit the application of the corrective measures to certain types of infringement of an intellectual property right. In addition, Article 10(3) Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights stipulates that when imposing the measure, the competent court must take into account the proportionality between the gravity of the infringement and the measures ordered as well as the interests of third parties. With reference to Hansson (C-481/14), the ECJ finally considers that the Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights “lays down a minimum standard concerning the enforcement of intellectual property rights and does not prevent the Member States from providing for measures that are more protective” (paragraph 48).

Based on the foregoing, the ECJ concludes that Article 10 Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights covers all goods that infringe intellectual property rights, irrespective of the form of infringement, without excluding a priori the application of the corrective measure of destruction, provided for in Article 10(1)(c), in the case of some of those infringements. Article 10(1) Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, must, therefore, be interpreted as precluding the interpretation of a provision of national law according to which a protective measure in the form of the destruction of goods may not be applied to goods which have been manufactured and to which an EU trade mark has been affixed, with the consent of the proprietor of that mark, but which were placed on the market of the EEA without his or her consent.