The lawsuit, which started in April 2011 with a customs seizure of counterfeit products, finally ended with a legally binding decision after a full round at all levels of court. The outcome was that the first decision by the Helsinki District Court was considered right.
Our firm's partner Jani Kaulo has represented the German ball bearing manufacturer Schaeffler Technologies in a trademark infringement case regarding counterfeit INA ball bearings through all possible court levels.
This complex, multi-stage legal process began 12 years ago when Finnish airport customs seized a batch of 150 counterfeit INA ball bearings on their way from China via Finland to Russia. The products were received and stored by an individual who acted as a bulwark, on behalf of the seller. The German manufacturer of the original INA bearings, which are used among others in bridges and engines, initiated legal proceedings and demanded that the person acting as intermediary in the counterfeit supply chain shall be punished for an industrial property offense and convicted of trademark infringement.
Full round at all levels of court: District Court -> Court of Appeal -> Supreme Court -> EU Court -> Supreme Court -> Court of Appeal
First, the District Court considered that the private person who received the ball bearings was guilty of trademark infringement. However, the Court of Appeal reversed the decision. The Supreme Court granted leave to appeal and requested a preliminary ruling in the case from the Court of Justice of the European Union (CJEU), which found the defendant guilty of trademark infringement. The Supreme Court followed the CJEU’s interpretation in its decision and considered that a trademark infringement had occurred. The Supreme Court, however, returned the case to the Court of Appeal regarding compensation, damages, and court costs.
The preliminary ruling by the EU Court is valuable for all brand owners
On February 15, 2023, the Court of Appeal issued a decision (23/106321), according to which the judgment given by the District Court is also valid with regard to the justifications and amount of compensation, damages and court costs following the trademark infringement. So the circle closed and the same decision that the District Court had already given in 2015 remained valid.
Were the resources of society, the EU and the parties involved wasted for eight years?
"Definitely not", says Jani Kaulo and justifies:
“The preliminary ruling of the CJEU stating that a private person can be held liable for compensation and damages for trademark infringement when acting as an intermediary in counterfeit trade is a significant victory for all European brand holders. The ruling is also important from the point of view of public security, and it will provide more effective means in the fight against counterfeiting and organized crime.”
The prestigious IP industry publication Managing Intellectual Property chose the case as ”Impact Case of the Year” at the EMEA Awards gala held in London on March 30, 2021. The judgment of the Supreme Court also has the status of a preliminary decision in the Finnish interpretation of law.
More detailed information about the case can be found here: