Imports from
third countries as
infringement.
Imports from
third countries as
infringement.
of
Is it sufficient to claim that a purchase was made for personal use in order to avoid trademark infringement when importing from third countries? And how can trademark owners prove that an alleged personal buyer was, in fact, acting for commercial purposes?
80 hub caps from China
A retiree ordered 80 hub caps featuring the BMW logo online from a supplier in China—divided into 20 sets of 4 each—for a total of 170.80 euros. The goods were shipped from China to the Federal Republic of Germany, where they were intercepted by customs and photographed. With the customer’s consent, the emblems were later destroyed.
BMW, as the owner of the BMW trademark, sent a cease and desist letter to the customer alleging trademark infringement. BMW believes that the quantity alone proves that the hub caps were not intended for personal use. Furthermore, a set of original hub caps is significantly more expensive than 2.14 euros per piece.
This case is one of a growing number of legal proceedings involving product and trademark piracy, in which counterfeit goods are imported in small shipments from third countries.
A retiree, 24 wheel rims, and a charge of trademark piracy
The retiree countered that he was a consumer and owned a total of 24 rims for his own vehicles for personal use. Since the hub caps were only available in sets of 4, he had decided to purchase 20 sets. This allowed him to benefit from a volume discount and free shipping. He claimed it had not been apparent to him that the products were counterfeits from China, especially since authorized BMW dealers also offered hub caps at comparably low prices. Furthermore, he had not acted in the course of business and had not arranged for the import, because the purchase agreement on eBay had already been canceled prior to shipment.
BMW filed a lawsuit seeking an injunction against the use of the BMW logo on emblems and stickers, a declaration of liability for damages, information regarding the sales, profits, origin, and distribution channels of the goods, and reimbursement of the costs of the cease-and-desist notice.
The Frankenthal Regional Court found the defendant fully liable
In its judgment dated August 5, 2026, Case No. 6 O 19/26, the Frankenthal Regional Court fully granted the claim and found the retiree liable.
Why doesn’t a private order automatically protect against liability?
At its core, the dispute revolved around a single question: Did the defendant act “in the course of business”—that is, as part of an economic activity—or was it in fact a purely private matter? Only commercial activity constitutes an infringement of trademark rights; purely private use remains permitted. The court clarified that private imports remain permissible in principle, as long as they consist of genuine personal souvenirs.
Just as with private sales, the private importation of goods that would be prohibited from being sold within Germany or the EU is generally permitted. However, this applies only to private “souvenirs”: A “luxury handbag” purchased for personal use on a vacation beach is permitted; the importation of infringing goods by third parties, on the other hand, remains prohibited, even if it is based on a private order.
In other words: The “vacation souvenir” case is the exception, not the rule. Since its “shell.de” ruling in 2002, the Federal Court of Justice has determined whether someone was acting in a business or private capacity based on what is apparent to an outside observer. Key factors include, above all, the type and quantity of the imported goods, as well as the person importing them. The court already considered these to be sufficient objective criteria in this case. The 80 hub caps ordered far exceeded what is customary in private transactions. In addition, the defendant, a retiree, had also intended to use the emblems on his wife’s and sons’ rims and, while clearing out his garage, had planned to resell the rims along with the hub caps. According to the court, even such a transfer without the intent to make a profit is sufficient to constitute a transaction in the course of business.
Who has to prove exhaustion?
The allocation of the burden of presentation and proof is of practical significance for trademark owners. If the trademark owner has not placed the goods on the market in the European Economic Area themselves, trademark exhaustion does not apply. The judges point out that it is up to the defendant to substantiate a claim of exhaustion if the defendant wishes to rely on it. Merely disputing that the goods are counterfeit is not sufficient. Thus, the trademark owner is not required to prove on its own initiative that exhaustion has not occurred once it is established that the goods were directly imported from a third country.
Our previous article on parallel imports from third countries had already shown that trademark owners can take action against imports from countries outside the European Economic Area without having to worry about the exhaustion of their rights.
What role does customs seizure play?
The case also illustrates the interplay between civil enforcement and customs seizure. The emblems were seized by customs, photographed, and destroyed with the defendant’s consent even before the lawsuit was filed. According to the case law of the European Court of Justice cited by the court, private recipients must also accept the destruction of goods in border seizure proceedings if they originate from a commercial sender in a third country, even if the recipient is not acting in the course of business. The customs seizure thus applies regardless of whether the recipient is later held liable under civil law.
Consistent Application of the shell.de Formula
This decision is not really new. It applies the principles of the Federal Court of Justice—which have been well-established for years—to a very common scenario in trademark law: placing an order via the Internet with a supplier from a third country, ostensibly for personal use, but in a quantity that exceeds what is recognizable as personal need. For trademark owners, the ruling is nevertheless of practical value: It shows that the apparent quantity alone can suffice as evidence, without the need to prove an intent to make a profit or resell the goods in each individual case.
Conclusion
The ruling makes it clear that purchasers cannot avoid liability simply by claiming, “It was just for personal use.” As soon as it becomes apparent that the quantity or intended use exceeds personal needs, the protection afforded to genuine souvenirs no longer applies. For trademark owners, the decision thus confirms a viable line of argument against direct imports from third countries without the need to prove, in detail, an intent to resell for commercial purposes.
However, the ruling leaves open the question of where, in individual cases, the line is drawn between a truly personal gift and a business transaction when the quantity ordered is only slightly more than what would be considered a reasonable personal need.
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