Tag Archives: Counterfeiting

Intellectual property rights: enhancing their enforcement

Intellectual property rights: enhancing their enforcement

Outline of the Community (European Union) legislation about Intellectual property rights: enhancing their enforcement

Topics

These categories group together and put in context the legislative and non-legislative initiatives which deal with the same topic.

Internal market > Businesses in the internal market > Intellectual property

Intellectual property rights: enhancing their enforcement

Document or Iniciative

Communication from the Commission to the Council, the European Parliament and the European Economic and Social Committee of 11 September 2009 – Enhancing the enforcement of intellectual property rights in the internal market [COM(2009) 467 final – Not published in the Official Journal].

Summary

This Communication presents measures aimed at safeguarding intellectual property rights (IPR) and combating counterfeiting and piracy within the internal market.

European Observatory

The European Commission is establishing a European Observatory, the aim of which is to gather, monitor and report information and data related to IPR.

This Observatory requires collaboration between Member States and the private sector.

The main functions of the Observatory are:

  • the collection and use of independent, reliable information and data;
  • the dissemination of best practice amongst public authorities;
  • the dissemination of successful private sector strategies;
  • the assessment and identification of solutions for specific geographical areas.

The Observatory should be based on existing European Commission structures, and the Commission will provide the central administrative resource. It will however be possible, where necessary, to make use of external expertise.

The Commission has asked the Member States to appoint a national representative for the Observatory and has requested the participation of the private sector including a broad range of national and pan-European bodies representing the different economic sectors most involved in the fight against piracy and counterfeiting. European consumers are also represented and invited to play an active role.

Administrative cooperation across Europe

It is necessary to improve cross-border cooperation between different enforcement authorities in view of the international nature of IPR infringements.

Cooperation between the Commission and Member States should also be consolidated in the context of a borderless internal market. In this regard, the creation of a network of contact points across the European Union would be a relevant solution.

As the national centres of IPR expertise, National Intellectual Property Offices also have a role to play. They can contribute to developing strategic approaches and the dissemination of best practices.

National bodies should improve transparency in respect of the activities that they carry out in the field of IPR protection. The Commission, on the basis of information collected from Member States, is responsible for analysing the structures that Member States have put in place and drafting a report to map existing strategies, frameworks and best practices.

Stakeholders in European cooperation in the field of IPR should have access to an electronic network for the exchange of information on infringements that have been committed. This network will need to:

  • support ‘real-time’ exchanges of information on goods and services infringing IPR;
  • put in place an effective system of alerts concerning specific products or potential threats;
  • facilitate communication between the parties involved, particularly to overcome language barriers;
  • raise consumers’ awareness of the growing threat of counterfeiting and piracy and the associated risks.

Voluntary arrangements between stakeholders

The Commission wishes to encourage rights holders and the other parties involved to engage in dialogue and to share their common interests in combating IPR infringements. In this regard, voluntary arrangements seem to be the most appropriate solution, since this type of agreement allows for rapid adaptation to new technologies and may be extended beyond the European Union (EU).

The sale of counterfeit goods over the Internet has developed considerably in recent years. The Commission considers this sector as a priority for action where the method of dialogue and cooperation agreements could be applied effectively.

Brand owners and Internet companies alike have therefore committed themselves to developing a collaborative method. This involves a Memorandum of Understanding dealing with prevention, identification and removal of infringing offers and sellers from Internet platforms.

The Commission envisages legislative solutions if voluntary arrangements cannot be implemented.

Context

IPR infringements, particularly counterfeiting and piracy, cause widespread economic harm and even pose a threat to public health and consumer safety. The Commission therefore considers it necessary to protect IPR in order to foster economic growth, innovation and creativity.

Protecting the euro against counterfeiting: the role of Europol

Protecting the euro against counterfeiting: the role of Europol

Outline of the Community (European Union) legislation about Protecting the euro against counterfeiting: the role of Europol

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These categories group together and put in context the legislative and non-legislative initiatives which deal with the same topic.

Fight against fraud > Fight against counterfeiting

Protecting the euro against counterfeiting: the role of Europol

Document or Iniciative

Council Decision 2005/511/JHA of 12 July 2005 on protecting the euro against counterfeiting, by designating Europol as the Central Office for combating euro counterfeiting.

Summary

The European Union is stepping up cooperation among Member States and between Member States and Europol with a view to protecting the euro against counterfeiting at international level. Third countries need a central contact for information on counterfeit euros. All such information is to be brought together for purposes of analysis at Europol, which acts as the Central Office for combating euro counterfeiting pursuant to the International Convention for the Suppression of Counterfeiting Currency agreed on 20 April 1929 in Geneva (“Geneva Convention”).

Role of Europol

Europol acts as the Central Office for combating euro counterfeiting within the meaning of Article 12 of the Geneva Convention, which states “In every country, within the framework of its domestic law, investigations on the subject of counterfeiting should be organised by a central office.”

Within the context of its mandate, Europol:

  • centralises and processes all information of a nature to facilitate the investigation, prevention and combating of euro counterfeiting and forwards this information to the national central offices of the Member States;
  • corresponds directly with the central offices of third countries in accordance with the rules on the transmission of personal data;
  • forwards, in so far as it considers it expedient, to the central offices of third countries a set of specimens of actual euros;
  • regularly notifies the central offices of third countries of new currency issued, the withdrawal of currency from circulation, any discovery of counterfeit or falsified euro currency, details of discoveries of counterfeiting, etc.

Where counterfeiting of all other currencies is concerned, the national central offices retain competence.

Applying the 1929 Geneva Convention effectively

The International Convention for the Suppression of Counterfeiting Currency agreed on 20 April 1929 in Geneva should be applied more effectively. It lays down effective rules for preventing and combating counterfeiting infringements. The word “currency” refers to banknotes and coins having legal tender.

The Council considers it expedient that all Member States should become contracting parties to the Convention.

References

Act Entry into force Deadline for transposition in the Member States Official Journal
Decision 2005/511/JHA 16.07.2005 Official Journal L 185 of 16.07.2005

Enforcement of intellectual property rights

Enforcement of intellectual property rights

Outline of the Community (European Union) legislation about Enforcement of intellectual property rights

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These categories group together and put in context the legislative and non-legislative initiatives which deal with the same topic.

Internal market > Businesses in the internal market > Intellectual property

Enforcement of intellectual property rights

Document or Iniciative

Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights.

Summary

Up to now, the action taken by the European Community (EC) in the field of intellectual property has focused mainly on the harmonisation of national substantive law and the creation of a unitary right at Community level. For example, certain national intellectual property rights, such as trademarks, designs, patents for biotechnological inventions and certain aspects of copyright and related rights, have been harmonised. The Community has also created some unitary rights at Community level; these rights are immediately valid throughout the EC and include the Community trademark and, more recently, Community designs. Discussions are also under way in the Council of Ministers with regard to creating a Community patent.

While the gradual harmonisation of substantive law on intellectual property rights has promoted the free movement of goods between European Union (EU) countries and made the rules applicable more transparent, the means of enforcing intellectual property rights have not been harmonised at all until now. This directive aims to change that.

Counterfeiting and piracy, and infringements of intellectual property in general, are phenomena that are becoming increasingly widespread and have now taken on an international dimension. As a result, they represent a serious threat to national economies and governments. In the European internal market, these phenomena take particular advantage of the national disparities that may exist in the means by which intellectual property rights are enforced. In other words, counterfeit and pirated products are more likely to be manufactured and sold in countries that are less effective than others in combating counterfeiting and piracy.

Objectives

Whilst the principal objective of this directive is to ensure an equivalent level of protection for intellectual property in EU countries, there are also other objectives, such as:

  • promoting innovation and business competitiveness. If counterfeiting and piracy are not punished effectively, they can lead to a loss of confidence in the internal market. Such a situation would discourage creators and inventors, and endanger innovation and creativity in the Community;
  • safeguarding employment in Europe. In social terms, the damage suffered by businesses as a result of counterfeiting and piracy is reflected ultimately in the number of jobs they offer;
  • preventing tax losses and destabilisation of the markets. The tax losses caused by counterfeiting and piracy are significant. This phenomenon is a genuine threat to the economic equilibrium since it can also lead to a destabilisation of the more fragile markets that it attacks (such as the market in textile products). In the multimedia products industry, counterfeiting and piracy via the Internet are steadily increasing and have already resulted in very considerable losses;
  • ensuring consumer protection. Counterfeiting and piracy are generally accompanied by deliberate cheating of consumers as to the quality they are entitled to expect from a product bearing, for instance, a famous brand name. This is because counterfeit and pirated products are produced without the checks made by the competent authorities and do not comply with minimum quality standards. When they buy counterfeit or pirated products, consumers do not in principle benefit from a guarantee, after-sales service or effective remedy in the event of damage. These activities may also pose a real threat to the health of the consumer (counterfeit medicines) or to his/her safety (counterfeit toys or parts for cars or aircraft);
  • ensuring the maintenance of public order. Counterfeiting and piracy infringe labour legislation (clandestine labour), tax legislation (loss of government revenue), health legislation and legislation on product safety.

Scope

The measures provided for by this directive apply to any infringement of the intellectual property rights as provided for by Community law and/or by the national law of the EU country concerned. This directive does not, on the other hand, affect the provisions on the enforcement of rights or those on exceptions contained in Community legislation concerning copyright and rights related to copyright.

Furthermore, the directive does not affect:

  • Community provisions governing the substantive law on intellectual property;
  • EU countries’ international obligations and notably the Agreement on Trade-Related Aspects of Intellectual Property Rights (the “TRIPS Agreement”);
  • any national provisions in EU countries relating to criminal procedures or penalties in respect of infringement of intellectual property rights.

General obligation

EU countries should set up the measures and procedures needed to ensure the enforcement of intellectual property rights and take appropriate action against those responsible for counterfeiting and piracy. These measures and procedures should be sufficiently dissuasive, but avoid creating barriers to legitimate trade and offer safeguards against their abuse.

Persons entitled to request the application of measures and procedures

A request to apply intellectual property protection measures may be submitted by the holders of intellectual property rights, their representatives and all other persons authorised to use those rights in accordance with the applicable law. Wherever they represent intellectual property right holders, rights management or professional defence bodies may also ask to apply these measures.

Evidence

Under certain conditions, parties may be obliged to produce evidence that is under their control. EU countries should also take the necessary measures to enable the responsible authorities to order, on application by a party, the communication of banking, financial or commercial documents under the control of the opposing party.

Where there is a demonstrable risk of an intellectual property right being infringed, even before the commencement of proceedings on the merits of the case, the competent judicial authorities may order prompt provisional measures to preserve evidence.

Right of information

At the request of the right holder, the judicial authorities may order any person to provide information on the origin of the goods or services that are thought to infringe an intellectual property right and on the networks for their distribution or provision, if that person:

  • was found in possession of the infringing goods for commercial purposes;
  • was found to be using the infringing services for commercial purposes;
  • was found to be providing services used in infringing activities for commercial purposes;
  • was indicated as being involved in the production, manufacture or distribution of the infringing goods or services.

Provisional and precautionary measures

At the request of the applicant, the judicial authorities may serve the alleged infringer with an interlocutory injunction intended to:

  • prevent any impending infringement of an intellectual property right;
  • forbid, on a provisional basis, the continuation of the alleged infringements of an intellectual property right;
  • make such continuation subject to the lodging of guarantees intended to ensure the compensation of the right holder.

In certain cases, the judicial authorities may authorise the precautionary seizure of the fixed and non-fixed assets of the alleged infringer, including the blocking of his/her bank accounts and other assets.

Measures resulting from a decision on the merits of the case

At the request of the applicant, the judicial authorities may order the recall of the goods that have been found to infringe an intellectual property right. The goods concerned as well as the materials and implements used for their creation may also be removed from the channels of commerce. Finally, the judicial authorities may order the destruction of counterfeit or pirated goods.

Where a judicial decision has been taken finding an infringement of an intellectual property right, the judicial authorities may issue against the infringer an injunction aimed at prohibiting the continuation of the infringement. Where appropriate, non-compliance with an injunction may be subject to a recurring penalty payment, with a view to ensuring compliance.

The competent judicial authorities may also order pecuniary compensation to be paid to the injured party instead of applying the removal or destruction measures, if that person acted unintentionally and if execution of these measures would cause him/her disproportionate harm

Damages and legal costs

On application of the injured party, the competent judicial authorities may order an infringer to pay the right holder damages in reparation of the loss incurred.

The court costs, lawyer’s fees and any other expenses incurred by the successful party will normally be borne by the other party.

Sanctions by EU countries

Unlike the Commission’s initial proposal, the directive, as adopted, contains no provisions on criminal sanctions against fraudsters. The directive merely stipulates that EU countries are free to apply other sanctions, which go further than the provisions set out, to prosecute offenders.

Background

In October 1998, the Commission presented a Green Paper on the fight against counterfeiting and piracy in the internal market in order to launch a debate on this subject with the interested parties. This consultation exercise confirmed that the disparities between the national systems of intellectual property rights were having a harmful effect on the proper functioning of the internal market. In November 2000, after this consultation phase, the Commission presented a follow-up Communication to the Green Paper proposing an action plan to improve and intensify the fight against counterfeiting and piracy. Among the initiatives proposed in that action plan was a directive that would harmonise national provisions on the means by which intellectual property rights are enforced.

References

Act Entry into force Deadline for transposition in the Member States Official Journal
Directive 2004/48/EC

22.6.2004

29.4.2006

OJ L 195 of 2.6.2004

Related Acts

Statement 2005/295/EC by the Commission concerning Article 2 of Directive 2004/48/EC of the European Parliament and of the Council on the enforcement of intellectual property rights [Official Journal L 94 of 13.4.2005].
This statement by the Commission lists the intellectual property rights that are covered by the scope of the directive on the enforcement of intellectual property rights.
These include:

  • copyright;
  • rights related to copyright;
  • sui generis right of a database maker;
  • rights of the creator of the topographies of a semiconductor product;
  • trademark rights;
  • design rights;
  • patent rights, including rights derived from supplementary protection certificates;
  • geographical indications;
  • utility model rights;
  • plant variety rights;
  • trade names, in so far as these are protected as exclusive property rights in the national law concerned.

European Technical and Scientific Centre

European Technical and Scientific Centre

Outline of the Community (European Union) legislation about European Technical and Scientific Centre

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These categories group together and put in context the legislative and non-legislative initiatives which deal with the same topic.

Fight against fraud > Anti-fraud offices

European Technical and Scientific Centre (ETSC)

Document or Iniciative

Commission Decision 2005/37/EC of 29 October 2004 establishing the European Technical and Scientific Centre (ETSC) and providing for coordination of technical actions to protect euro coins against counterfeiting.

Summary

This decision establishes the European Technical and Scientific Centre (ETSC) within the European Commission in Brussels, attached to the European Anti-Fraud Office (OLAF).

Tasks of the centre

The ETSC:

  • analyses and classifies every new type of counterfeit euro coin, in accordance with the regulation on the protection of the euro against counterfeiting;
  • contributes to fulfilling the objectives of the Pericles programme;
  • assists the Coin National Analysis Centres (CNAC) and law-enforcement authorities;
  • collaborates with relevant authorities in the analysis of counterfeit euro coins and the strengthening of protection.

Hosting at the French Mint

For the technical and scientific analysis of counterfeit euro coins, the ETSC uses the personnel and premises that the French Mint has made available, and notably its laboratory. The Commission seconds specialist members of its personnel for this purpose. The other expenses attributable to the work carried out by the ETSC are charged to the general budget of the European Union (EU).

Coordination and information activities

The Commission coordinates the actions of the technical authorities competent for the protection of euro coins, in particular through regular meetings of the Counterfeit Coin Experts Group. Chaired by the Commission, this group allows pooling of the various experiences and expertise of EU countries in relation to counterfeiting of euro coins and coordination of technical actions necessary to protect the euro.

The Economic and Financial Committee, the European Central Bank (ECB), the European Police Office (Europol) and the competent national authorities are regularly kept informed of the centre’s activities and of the situation as regards coin counterfeiting.

References

Act Entry into force Deadline for transposition in the Member States Official Journal
Decision 2005/37/EC

29.10.2004

OJ L 19 of 21.1.2005

Related Acts

Regulation (EU) No 1210/2010 of the European Parliament and of the Council of 15 December 2010 concerning authentication of euro coins and handling of euro coins unfit for circulation [Official Journal L 339 of 22.12.2010].
This regulation introduces common rules and procedures within the euro area for checking the authenticity of euro coins in circulation and for handling and reimbursing euro coins unfit for circulation.
With a view to coordinating the application of these rules and procedures, the ETSC is responsible for defining, among others, the:

  • technical specifications for the detection tests of coin-processing machines used for verifying the authenticity of euro coins;
  • training practices for the cash handlers’ personnel tasked with checking euro coins;
  • validity period of the summary reports on detection tests;
  • information to be provided on the list published on the Commission website of coin-processing machines that have successfully passed a detection test;
  • guidelines for annual on-the-spot controls by EU countries of cash handlers’ capacity to authenticate euro coins;
  • rules for rectifying a cash handler’s non-compliance with the provisions of the regulation.

Council Decision 2003/861/EC of 8 December 2003 concerning analysis and cooperation with regard to counterfeit euro coins [Official Journal L 325 of 12.12.2003].

This decision, addressed to the EU countries of the euro zone, provides for the establishment by the Commission of the European Technical and Scientific Centre and ensures its functioning.

Council Decision 2003/862/EC of 8 December 2003 extending the effects of Decision 2003/861/EC concerning analysis and cooperation with regard to counterfeit euro coins to those Member States which have not adopted the euro as their single currency [Official Journal L 325 of 12.12.2003].

This decision extends the effects of Decision 2003/861/EC to EU countries that have not adopted the euro as their single currency.

Agreement with China

Agreement with China

Outline of the Community (European Union) legislation about Agreement with China

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Fight against fraud > Protecting the European Union’s financial interests

Agreement with China

Document or Iniciative

Council Decision 2004/889/EC of 16 November 2004 on the conclusion of an Agreement between the European Community and the Government of the People’s Republic of China on cooperation and mutual administrative assistance in customs matters.

Summary

This Agreement improves cooperation between the administrative authorities responsible for the application of customs legislation *. Action to tackle operations in breach of EU and Chinese customs legislation is more effective if it is backed up by mutual assistance in customs matters. The operations concerned are those prejudicial to the economic, fiscal and commercial interests of the Parties: it is essential to any State to ensure the accurate assessment of customs duties and other taxes.

Developing customs cooperation

The Parties to the Agreement undertake to develop customs cooperation, in particular by:

  • establishing channels of communication;
  • facilitating effective coordination between administrative authorities;
  • providing for joint action on administrative matters;
  • facilitating the legitimate movement of goods;
  • exchanging information and expertise on customs procedures;
  • providing each other with technical assistance, e.g. exchanges of personnel and experts, training and the exchange of professional data, etc.;
  • seeking a coordinated position when customs topics are discussed in international organisations.

Mutual administrative assistance

Under the Agreement, customs authorities will assist each other by providing information to ensure the proper application of customs legislation: this does not prejudice the application of existing rules governing mutual assistance in criminal matters. Nor does it apply to information obtained at the request of judicial authorities. However, assistance to recover duties, taxes or fines, the arrest or detention of any person and the seizure or detention of property is not covered by this Agreement. The Agreement with China provides both for assistance on request and spontaneous assistance.

Assistance on request: The requested authority must provide the applicant authority with all information which may enable it to ensure that customs legislation is correctly applied. Such information may relate to:

  • activities that may result in offences within the territory of the other Party, for example, the presentation of incorrect declarations or other falsified documents;
  • the authenticity of official documents produced in support of a goods declaration;
  • the legality of exports and imports of goods from the territory of one of the Contracting Parties to the territory of the other and the customs procedure applied.

The requested authority must also, within the framework of its competence and at the request of the applicant authority, take the necessary steps to ensure special surveillance. Surveillance relates to persons in respect of whom there are reasonable grounds for believing that they have committed an infringement of the customs legislation of one of the Parties. It can also cover places, stocks and goods transported, as well as means of transport that may have been used under fraudulent conditions.

6. Spontaneous assistance: In cases where a formal request is not possible in view of the urgency of a situation that could involve substantial damage to the economy, public health, public security or similar vital interest, the Parties will assist each other at their own initiative.

Formal aspects and exceptions to the obligation to provide assistance

Requests must comply with certain requirements of form and substance in relation to: the formal endorsement of the applicant authority, the action requested, the object of and the reason for the request, etc. The requested authority proceeds, within the limits of its competence and available resources, as though it were acting on its own account. It executes the requests in accordance with the legally binding instruments applicable in its own jurisdiction. The response must be in writing.

Exceptions to the obligation to provide assistance are allowed: assistance may be refused or may be subject to certain requirements if it is likely to prejudice:

  • the sovereignty of the People’s Republic of China or that of an EU Member State which has been requested to provide assistance;
  • public order, security or other essential interests.

The Agreement contains confidentiality clauses in relation to the information provided. The Agreement applies to the customs territory of the People’s Republic of China and to the territories in which the Treaty establishing the European Communities is applied, i.e. in the 25 EU Member States. It entered into force on 1 April 2005.

Key terms

Customs legislation: customs legislation includes any legal provisions of the European Community or of China which govern the import, export and transit of goods or their placing under any other customs regime or procedure, including measures of prohibition, restriction and control (Article 1(a)).

References

Act Entry into force Deadline for transposition in the Member States Official Journal
Decision 2004/889/EC 01.04.2005 Official Journal L 375 of 23.12.2004

 

Customs response to latest trends in counterfeiting and piracy

Customs response to latest trends in counterfeiting and piracy

Outline of the Community (European Union) legislation about Customs response to latest trends in counterfeiting and piracy

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Internal market > Businesses in the internal market > Intellectual property

Customs response to latest trends in counterfeiting and piracy

Document or Iniciative

Communication of 11 October 2005 from the Commission to the Council, the European Parliament and the European Economic and Social Committee on a customs response to latest trends in counterfeiting and piracy [COM(2005) 479 final – not published in the Official Journal].

Summary

This Communication sets out a range of initiatives aimed at cracking down on counterfeiting and piracy. The measures in question will be implemented by customs.

Problems and threats

The industrial production of counterfeit goods poses a threat to:

  • the health, safety and jobs of EU citizens (e.g. fake medicines or foodstuffs);
  • the competitiveness and trade of the European Community (EC);
  • investment in research and innovation in the EC.

There was a 1000 % increase in counterfeiting and piracy between 1998 and 2004. In 2004 alone, 103 million fake or pirated articles were seized by customs officials in the EC; 4.4 million of these were fake foodstuffs and alcoholic drinks. Much of this traffic is sold on the black market, which means losses of tax revenue for Member States.

Most of the products seized are household items, with growing numbers of sophisticated hi-tech products being faked. The quality of these counterfeits is now so good that it is becoming difficult to distinguish the real article from the fake. What is more, high profits and relatively low risks make counterfeiting and piracy lucrative for those involved in organised crime.

Recommendations and Action Plan

The Commission proposes a range of recommendations aimed at tightening customs controls to help combat counterfeiting and piracy in the Community.

In its action plan, the Commission considers measures to be necessary in the following areas:

  • increasing protection at the level of Community legislation and operational performance;
  • strengthening the partnership between customs and businesses;
  • improving international cooperation.

Legislation

Customs controls on inbound traffic need to be improved and the suitability of the existing legal and operational measures has to be examined. Two concerns in particular must be addressed. The first involves the simplified destruction procedures that will reduce costs to businesses and public administrations alike. The second relates to the fact that travellers are currently permitted to import small quantities of personal-use items that may be counterfeit.

Operational performance

New techniques and instruments are needed to ensure that operational capacity is consistently high. Actions have to be developed and brought together in a new operational control plan based on risk management. The EU’s Customs Information System (CIS) enables the national customs services of Member States to exchange and search for customs information.

Partnership

Effective customs enforcement can be guaranteed only if businesses are also fully involved. Improving the early exchange of information between businesses and customs is also important. A possible solution could take the form of an EU electronic information system for intellectual property rights.

International cooperation

The main region producing counterfeit goods is Asia, and China in particular. International cooperation is crucial in halting the production and export of counterfeit goods. The Commission intends to:

  • introduce export and transhipment controls;
  • exploit and extend Customs Cooperation Agreements to cover regions where there is a significant level of counterfeit production;
  • enhance the World Trade Organization (WTO) agreement on trade-related aspects of intellectual property rights (TRIPS);
  • strengthen cooperation with the World Customs Organization (WCO), Europol and Interpol;
  • enter into bilateral arrangements, especially with China.

Related Acts

Council Resolution of 13 March 2006 on a customs response to latest trends in counterfeiting and piracy [Official Journal C 67 of 18.3.2006]

Commission Regulation (EC) No 1891/2004 of 21 October 2004 laying down provisions for the implementation of Council Regulation (EC) No 1383/2003 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 [Official Journal L 328 of 30.10.2004].

Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights [Official Journal L 157 of 30.4.2004].

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 [Official Journal L 196 of 2.8.2003].

This Regulation sets out measures and conditions for the customs authorities to take action against goods found to have infringed IPR.

Council Regulation (EC) No 515/97 of 13 March 1997 on mutual assistance between the administrative authorities of the Member States and cooperation between the latter and the Commission to ensure the correct application of the law on customs and agricultural matters [Official Journal L 82 of 22.3.1997].

This Regulation establishes a centralised customs information system.

Goods infringing intellectual property rights

Goods infringing intellectual property rights

Outline of the Community (European Union) legislation about Goods infringing intellectual property rights

Topics

These categories group together and put in context the legislative and non-legislative initiatives which deal with the same topic.

Internal market > Businesses in the internal market > Intellectual property

Goods infringing intellectual property rights

Document or Iniciative

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.

Summary

This Regulation enables customs authorities, in cooperation with right-holders, to improve controls at external border.

It simplifies the procedure for the lodging of applications for action with the customs authorities, in particular for small and medium-sized enterprises (SMEs), and for the destruction of fraudulent goods.

The Regulation sets up a more efficient system by laying down, on the one hand, the conditions for customs action where goods are suspected of infringing intellectual property rights, and on the other hand the measures to be taken against goods that have been found to infringe intellectual property rights.

In order to protect consumers by ensuring the protection of food products, the Regulation extends the scope of application of Community action to cover new types of intellectual property rights: new plant varieties, geographical indications and designations of origin.

Scope

The Regulation applies to:

  • counterfeit goods *;
  • pirated goods *;
  • patents;
  • supplementary protection certificates;
  • designs and models;
  • copyright and related rights;
  • trademarks;
  • designations of origin;
  • new plant varieties;
  • geographical indications;
  • any mould or matrix designed or adapted for the manufacture of goods infringing an intellectual property right.

Application for customs action

Where goods are suspected of infringing intellectual property rights, the right-holder may lodge a written application with the relevant customs authorities. Such an application for action must include an accurate and detailed technical description of the goods in question, any information concerning the nature of the fraud and the name and address of the contact person appointed by the right-holder. The right-holder may also request the intervention of the customs authorities of one or more Member States if he is the holder of a Community trademark, design or model, a Community protection, a new plant variety, a designation of origin, or a geographical indication or designation protected by the Community.

The law applicable when deciding whether an intellectual property right has been infringed is the law in force in the Member State where the goods were found. In accordance with national provisions, and with the right-holder’s agreement, the Member States may now set up a simplified procedure to enable the customs authorities to have the goods destroyed. If the infringement of an intellectual property right is not established within a set deadline, the detention order is lifted and the goods are released once the necessary customs formalities have been discharged. The deadline is shorter in the case of perishable goods.

Goods found to infringe an intellectual property right may not be:

  • brought into the customs territory of the Community;
  • withdrawn from the customs territory of the Community;
  • released for free circulation;
  • exported;
  • re-exported;
  • placed under a suspensive arrangement, in a free zone or free warehouse.

If the customs authorities have sufficient reason to suspect that goods are infringing an intellectual property right, they may suspend the release of goods or retain goods for three working days, during which time the right-holder must submit an application for action. In accordance with the rules in force in the Member State concerned, the customs authorities may ask the right-holder for information to help them in their investigation.

The competent customs office sets a period during which the action must take place. Such a period may not exceed one year. The decision to take action is notified to the customs office in the Member State or States concerned. The customs office may request additional information.

The Customs Code Committee has the task of assisting the Commission in applying this Regulation.

This Regulation applies from 1 July 2004 and repeals Regulation (EC) No 3295/94 from that date.

Key terms used in the act
  • Counterfeit goods: goods or trade mark symbols or packaging presented separately, bearing without authorisation a trademark identical to another trademark validly registered, or which cannot be distinguished in its essential aspects and which thereby infringes the trademark-holder’s rights.
  • Pirated goods: goods that are or contain copies made without the consent of the holder of a copyright or related right or design right.

References

Act Entry into force Deadline for transposition in the Member States Official Journal
Regulation (EC) No 1383/2003 09.08.2003 OJ L 196, 02.08.2003

Related Acts

Commission Regulation (EC) No 1891/2004 of 21 October 2004 laying down provisions for the implementation of Council Regulation (EC) No 1383/2003 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 [Official Journal L 328 of 30.10.2004].

This Regulation clarifies the provisions for the implementation of Council Regulation No 1383/2003. It defines the natural and legal persons who may represent the holder of a right or any other person authorised to use the right. It is also necessary to specify the nature of the proof of ownership of intellectual property.
The Regulation lays down a model form and the language requirements for applications for action to ensure harmonisation and standardisation in this area. It also specifies the type of information to be included in applications for action in order to facilitate the work of the customs administrations by recognising the goods that may infringe an intellectual property right. It also lays down the type of right-holder liability declaration that must accompany the application for action.
In the interests of legal certainty, the Regulation specifies when the time periods for the determination of an infringement of an intellectual property right commence.
The Regulation also lays down the procedures for the exchange of information between Member States and the Commission, so that it is possible for the Commission to monitor the effective application of the procedure and recognise patterns of fraud, and for the Member States to introduce appropriate risk analysis.