Braun Victorious against Albanian Importer of Fake ‘Brown’ Epilators

Oct 31 2014 - 13:34

On April 28, 2014, the First Instance Court of Tirana issued its highly anticipated decision in the case initiated by Braun GmbH, one of the world’s leading designers, developers and sellers of small electrical appliances. The case addressed the issue of whether, under the Albanian Customs Regulation, the Albanian customs authorities can intercept and subsequently seize goods that are confusingly similar.

It should be noted that the Albanian legal system has fully transposed the Council Regulation (EC) No. 1383/2003 of 22 July 2003 concerning the customs watch procedure, including its legal definitions regarding counterfeits.

In November 2013, the Albanian Customs detained a consignment of goods consisting of epilators marked ‘Brown’, as depicted in the picture below, originating in China, intended for the Albanian market.

Guided by the risk that the epilators might infringe the IP rights of Braun, the customs authorities informed the brand owner Braun GmbH of the detention. Braun GmbH is also the holder of the customs watch application for Braun stylized word mark, depicted above, approved by the Albanian Customs in 2011.

Braun determined the ‘Brown’ branded goods were not genuine and forwarded this assessment to the Customs, also expressing its willingness to destroy the goods through the simplified procedure.

The importer, an Albanian entity, contested the destruction of the goods, arguing that the goods do not fall under the category of counterfeit goods, as they are not identical.

The defendant referred to the definition of counterfeit goods in the Albanian Customs Regulation, which provides that “The goods infringing an intellectual property right means, a). Counterfeit goods that are: (i) goods, including packaging, bearing without authorization a trademark identical to the trademark validly registered in respect of the same type of goods, or which cannot be distinguished in its essential aspects from such a trademark”.

The defendant argued that the customs authorities should intervene in case of identical marks, or when marks/goods are extremely similar, but not in cases when certain similarities may cause the likelihood of confusion, as both the Customs and the brand owner argued. To this end, the importer asked the Customs to release the goods.

The customs authorities found the importer’s request groundless, kept the seized goods and informed Braun GmbH about the importer’s arguments. Braun GmbH moved forward with the case and lodged a civil claim before the First Instance Court, seeking the destruction of the goods as well as the obligation of the defendant to pay all costs incurred for keeping the goods under customs control.

The court analyzed whether the marks/goods fall within the scope of counterfeit. To that end, it ruled that in assessment whether the goods are counterfeit or not, the provisions of the Industrial Property Law should be taken into consideration, under which confusingly similar goods can indeed be considered to be infringing.

The Court thus upheld the plaintiff’s arguments in their entirety and concluded that the goods were counterfeit.

This decision clarifies the extent of Albanian Customs’ authority to inspect and detain goods suspected of infringing trademark rights. It expands the definition of counterfeit goods, allowing and obliging the customs authorities to intervene even in case of confusingly similar goods. It is a step forward in the Albanian case law, as fighting IP rights infringement remains one of the biggest challenges in Albania. Trademark practitioners have largely welcomed the decision, as it helps facilitate the enforcement of trademark rights in Albania.

The defendant has appealed the decision before the Appellate Court of Tirana.

By: Irma Cami

For more information, please contact Irma Cami at our Albania office.

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