Private Individuals’ Liability for Trademark Infringement Clarified by Finnish Supreme Court

Authors: Sarita Schröder and Panu Siitonen

In a much-anticipated landmark ruling (KKO:2020:72, in Finnish) handed down on 28 September 2020, the Finnish Supreme Court held that a private individual acting as a middleman can be held liable for trademark infringement.  

In April 2011, the defendant, private individual A, resident in Finland, received from China a consignment of 150 ball bearings weighing a total of 710 kg. The goods bore the plaintiff’s trademark, which is a registered for, among other things, ball bearings. However, the plaintiff had not authorised the importation of the goods, which the plaintiff maintained were counterfeit.

Once customs clearance of the consignment had been completed in A’s name, A transferred the consignment from the customs warehouse at the Helsinki-Vantaa airport to his home. Thereafter, a third party picked up the ball bearings from A’s home in several batches of approximately 50 kgs and transported them to Russia. As compensation for his efforts, A received a carton of cigarettes and a bottle of cognac.

In June 2015, the District Court of Helsinki found that A had infringed the plaintiff’s trademark rights and ordered him to pay the plaintiff EUR 3,875.40 in remuneration and EUR 9,445.33 in damages. However, in March 2016, the Helsinki Court of Appeal overturned the District Court’s ruling. According to the Court of Appeal, A had not infringed the plaintiff’s trademark rights, because A had not used the plaintiff’s trademark in the course of trade.

The plaintiff was granted leave to appeal to the Finnish Supreme Court, which initially sought guidance on from the Court of Justice of the European Union (“CJEU”) on whether a private individual, who takes delivery of, releases for free circulation in a Member State, and stores goods that are manifestly not intended for private use, must be regarded as using the trademark affixed to the goods in the course of trade. In its judgment of 30 April 2020 (C-772/18), the CJEU answered this question in the affirmative.

Following the guidance received from the CJEU, the Finnish Supreme Court overturned the Court of Appeal’s ruling and remitted the matter to the Court of Appeal.

The Finnish Supreme Court reasoned that taking into account the nature and quantity of the goods in question and the fact that A had not even claimed that they would have been intended for private use, the importation of the goods had taken place in the course of trade. Under these circumstances, the Finnish Supreme Court found it to be irrelevant how the goods had subsequently been handled (i.e. stored short term prior to being transported to Russia). Similarly, the Finnish Supreme Court found the value of the compensation that A had received for his efforts to be irrelevant.

The ruling can be seen as an important win for trademark owners, as it makes it more difficult for counterfeiters to evade liability by using private individuals as middlemen.