A private individual Ms. Dragica Poric in a span of several months tried to import wrist watches marked with the trademark ROLEX and Crown Design on at least three occasions. Each package contained a single watch. The watches were purchased online (www.aliexpress.com) outside European Union and were mailed to Slovenia. Three shipments were inspected and stopped by the Slovenian Customs and subsequently destroyed within the Customs Procedure because Ms. Poric did not object to the destruction.

Nevertheless, the trademark holder sued Ms. Poric for trademark infringement before the Circuit Court Ljubljana and requested that:

  • the court finds that Ms. Poric infringed Community trademarks ROLEX and Crown Design by online purchasing wrist watches bearing these trademarks and bringing them into Slovenia;

  • Ms. Poric is prohibited to infringe these trademarks in the future; and

  • Ms. Poric must publish the judgment in four major Slovenian newspapers.

In the action trademark holder was careful to explain that even though only one counterfeited watch was in each respective package, such activities in fact constitute trademark infringement because the import of the infringing product is explicitly mentioned in the Industrial Property Act as an act of trademark infringement. Trademark holder also referred to the judgment of the Court of Justice of the European Union (CJEU) No. C-98/13 in which the CJEU ruled:

“Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights must be interpreted as meaning that the holder of an intellectual property right over goods sold to a person residing in the territory of a Member State through an online sales website in a nonmember country enjoys the protection afforded to that holder by that regulation at the time when those goods enter the territory of that Member State merely by virtue of the acquisition of those goods. It is not necessary, in addition, for the goods at issue to have been the subject, prior to the sale, of an offer for sale or advertising targeting consumers of that State.”

In the response to action Ms. Poric explained that she had bought these watches in the online store www.Aliexpress.com for personal use and, at the time, had not known that the watches were marked with “ROLEX” trademarks. However, Ms. Poric acknowledged all action claims. Consequently, the court without further hearing examined whether the action claims are legally justified and then issued a judgment granting all action claims.

This case is significant because the Slovenian court for the first time ruled that online purchase at a foreign internet site and import of the counterfeited product into Slovenia constitutes infringement even though the buyer might be a consumer.

Gregor MačekSlovenian court finds that individual online purchase and mail delivery constitutes trademark infringement, WTR, 2016