Appellate Court of Tirana Confirms Braun’s Victory against Albanian Importer of Fake ‘Brown’ Epilators

In April 2015, the Appellate Court of Tirana rejected the appeal lodged by the Albanian importer of epilators marked ‘Brown’ and upheld the decision of the First Instance Court of Tirana in favor of Braun GmbH, the well-known developer and seller of small electrical appliances.

Braun GmbH argued that the defendant’s product design constituted an infringement of the plaintiff’s well-known trademark – Braun.

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.

In November 2013, the Albanian Customs detained a consignment of goods consisting of epilators marked ‘Brown’, as depicted in the picture above, originating in China and 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 that 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 Albanian importer 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 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. 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 in December 2013 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.

One of the most interesting rulings that both instances of the court rendered was related to the definition of counterfeit. After carefully analyzing the definition of counterfeit goods set forth in the Customs Regulation – it should be noted that the Albanian Customs Regulation has fully transposed the Council Regulation (EC) No. 1383/2003 of July 22, 2003 concerning the customs watch procedure, including its legal definitions regarding counterfeits – and in the Industrial Property Law, the Courts 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 infringing.

Furthermore, both courts found the contested goods/mark confusingly similar to the Braun mark, consequently accepting the plaintiff’s claims in their entirety.

The ruling 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 it helps facilitate the enforcement of trademark rights in Albania.

It is not yet known whether the defendant will appeal the decision before the Supreme Court.

By: Irma Cami

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