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Enforcement of intellectual property rights

Enforcement of intellectual property rights

Outline of the Community (European Union) legislation about Enforcement of 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

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 anti-counterfeiting and anti-piracy plan

European anti-counterfeiting and anti-piracy plan

Outline of the Community (European Union) legislation about European anti-counterfeiting and anti-piracy plan

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

European anti-counterfeiting and anti-piracy plan

Acts

Council Resolution of 25 September 2008 on a comprehensive European anti-counterfeiting and anti-piracy plan [Official Journal C 253 of 4.10.2008].

Summary

With this Resolution, the Council is calling on the Commission to put into effect the actions to combat counterfeiting and piracy set out in its Communication on an industrial property rights strategy for Europe [COM(2008) 465]. This Communication provides a set of measures aimed at enforcing industrial property, copy- and related rights such as customs initiatives, completing legislation, concluding inter-industry agreements, enforcing cross-border judgements, enforcing intellectual property rights in third countries and working towards a plurilateral anti-counterfeiting trade agreement (ACTA).

In this regard, the Commission is invited to establish a European counterfeiting and piracy observatory based on its existing structures. It should define in detail the arrangements and financing for the establishment and future operations of the observatory. The aim of the observatory should be to allow for regular evaluations and more accurate analysis of the counterfeiting and piracy situation in Europe. The data for this should be provided on a voluntary basis by both the private and public sectors.

The Commission should also communicate with actors taking part in the fight against counterfeiting and piracy. This should involve the diffusion of related information, in particular by using the Internet.

Finally, the Commission is also invited to develop awareness-raising activities in order to inform consumers of the dangers of counterfeiting. These should include operational guides and events to mark the European awareness day related to counterfeiting and piracy.

At the same time, the Council is also inviting the Commission and the Member States to take action to fight against counterfeiting and piracy. This should, among others, consist of drawing up an anti-counterfeiting customs plan for the period 2009-12. This plan should prioritise information sharing via electronic means, along with collaboration between border authorities, namely customs authorities, and rights holders. The Commission and the Member States should also review the customs law with a view to enhancing the legal framework so that the fight against counterfeiting is made more effective.

In addition, the Commission and the Member States should:

  • establish a rapid information exchange network for counterfeit products and services by stepping-up cross-border administrative collaboration with the help of national contact points and modern information and communication tools;
  • ensure that the institutions fighting against counterfeiting and piracy may coordinate properly by promoting the sharing of best practice between national administrations;
  • review the legal framework relating to intellectual property rights in order to evaluate its effectiveness;
  • encourage partnerships between the public and private sector for fighting counterfeiting and piracy, propose good practice and promote collaboration between professionals.

Furthermore, the Commission and the Member States should promote the protection of intellectual property rights within the international context, including in cooperation activities with third countries. This should consist of endorsing the inclusion and enforcement of intellectual property rights in bi- and multilateral agreements and actively working towards the conclusion of a plurilateral anti-counterfeiting trade agreement.

Background

In March 2008, the Council launched the new cycle of the renewed Lisbon strategy for growth and jobs (2008-10). In this context, the European Union was invited to fight against counterfeiting more effectively by working towards a more efficient system of protection of intellectual property rights.