Norwegian case law: Do not import counterfeit goods, not even for private use

After confirming that the import constituted use of identical marks to Omega's registrations in accordance with the Trademarks Act section 4 letter a, the District Court turned to the main question – whether import for private use could entail a trademark infringement given that protection under the Trademarks Act section 4 relates to use in commercial activities.

The District Court referred to the Norwegian preparatory works, Prop. 43 LS (2019-20) pages 126 and 165, and judgment C-98/13 Rolex of the European Court of Justice. In the Rolex case, the European Court of Justice held that import of a counterfeit Rolex watch for private use would constitute an infringement of Rolex's trademark rights, irrespective of the buyer's status. The similarities between the present case and the Rolex case provided, along with the preparatory works, sufficient legal basis for the District Court's conclusion that private import may infringe trademark rights irrespective of the buyer's status, on the condition that the sender operates commercially.

The District Court found no evidence that the sender was a private individual and therefore concluded that the imported watches constituted a trademark infringement. Furthermore, the District Court deemed it irrelevant that the counterfeit watches' identical marks were concealed in the advert – unlike the Trademark Act sections 58 and 61 regarding claims for damages and criminal sanctions, there is no condition of subjective knowledge of infringement to enact seizure and destruction.

Finally, the District Court ascertained that destruction was a proportional measure in accordance with the Trademark Act section 59 letter c, placing emphasis on both the harm such counterfeit trademarks cause to the trademark holder and the societal importance in preventing counterfeit goods with low quality that raise safety and environmental concerns. 

In addition to the import ban and destruction of the goods, the District Court also awarded legal costs amounting to NOK 19,599 to Omega. 

In our opinion, the District Court judgment strengthens intellectual property enforcement by clarifying and cementing that trademark protection prevents import of infringing products for private use when the seller operates commercially. It also sends a strong and clear message at the start of the summer holiday season – do not import counterfeit goods, not even for private use.