Article 21/D of Regulation 608/2013 provides that the trademark proprietor and its agent, namely Abac-Baan, may claim compensation for the damage suffered.
Furthermore, In its judgment in Case C-98/13 Blomqvist, the Court of Justice confirmed that the trademark proprietor (or its representative) is entitled to apply the customs procedure against consumers who have imported counterfeit goods for personal (non-commercial) use, primarily to obtain the destruction of the goods! This ruling concerns Regulation 1383/2003 but remains relevant under Regulation 608/2013.
Thus, goods coming from a third country which are imitations of goods protected in the European Union by a trade mark right or copies of goods protected in the Union by copyright, a related right or a design may infringe those rights and consequently be classified as ‘counterfeit goods’ or ‘pirated goods’, where it is proved that they are intended to be marketed in the Union, such proof being provided, in particular, where it is shown that those goods have been sold to a customer in the Union or have been the subject of an offer for sale or advertising to consumers in the Union (see Philips judgment to that effect).
It is common ground that, in the main proceedings, the goods in question were sold to a customer in the European Union. Such a situation is therefore in no way comparable to that of goods offered for sale on an ‘electronic marketplace’ or, a fortiori, to that of goods brought into the customs territory of the European Union under a suspensive procedure. Consequently, the mere fact that that sale took place via an internet site in a third country cannot have the effect of depriving the holder of an intellectual property right in respect of the goods sold of the protection afforded by the customs regulation, without it being necessary to examine whether, prior to that sale, an offer for sale of such goods was also made to the public or advertised to European Union consumers.
In the light of the foregoing, the answer to the questions referred is that the Customs Regulation must be interpreted as meaning that the holder of an intellectual property right in respect of goods sold to a person residing in a Member State by means of an online sale in a non-member country is, at the time when those goods enter the territory of that Member State, granted the protection guaranteed to that holder by that regulation solely on the basis of the acquisition of those goods. For that purpose, it is not necessary that, before the sale, an offer for sale of the goods in question was also made to, or advertised to, consumers in that State.
In the previous regulation on counterfeiting and piracy (1383/2003), there was no possibility of using information obtained from customs other than bringing an action before a court. Now, this information can be used for other purposes, including compensation of the infringer without the civil or criminal action. Thus, the name and address of the consignors and consignees communicated by customs can be used by right holders to enter negotiations, and especially the possibility of reaching an amicable settlement.