The European Parliament has approved a new Regulation (608/2013) concerning Customs enforcement of the Intellectual Property rights. It repeals the current Regulation (1383/2003) and will apply from 1 January 2014. The new Regulation doesn’t involve changes in the substantive law (that will be covered by the new legislative package, which involves the proposed new Community Trade Mark Regulation and the proposed Directive on Trade Marks in Member States). Thus, as the former Regulation, the new Regulation deals only with changes to the procedural rules for Customs authorities and does not affect the criteria for ascertaining the existence of an infringement of an IP right (recital 10).
The interpretation of this Regulation is really important since Article 54 requires Member States to bring into force the laws regulations and administrative provisions necessary to comply with, inter alia, Article 10 “by 24 months after entry into force of this Directive at the latest”.
Some improvements are introduced by this Regulation as follows:
– Simplifies the process by which counterfeit and pirated goods can be destroyed without the need for a court order. Member States may give their Customs authorities the power to destroy goods without a court determination that the goods infringe the relevant intellectual property rights, provided the rights holder agrees and the holder or the declarant of the goods agrees or does not object. Under this procedure, Customs may deem that the holder or the declarant of the goods has agreed to their destruction where there has been no opposition to the proposed destruction within 10 working days of notification. Moreover, rights holders will be able to make an application for general destruction, with the result that small postal or express courier consignments may be destroyed without the need for rights holders to provide consent for each instance of destruction.
– The scope of this new Regulation will cover a wider range of intellectual property rights than the current one, including rights in relation to trade names, semi-conductor topographies, plant varieties, circumvention devices and utility models.
– Contrary to the Commission’s original proposal, the new Regulation will not apply to parallel imports. Nor will it deal with goods in transit within the EU, between non-EU countries. However a new centralized electronic database will be set up (from early 2015) and Customs authorities in each EU Member State will be required to exchange information to improve communication between them.
– The Regulation extended powers to detain counterfeit or pirated goods at the borders of the European Union. It will only apply to counterfeit or pirated goods in transit and in certain specific circumstances. After such goods are detained, the consignee, consignor, the declarant or the holder of such goods seeking their release would be required to prove, in a court of law, that the counterfeit or pirated goods are destined for a country outside the EU market. The use of the words “origin, provenance and destination” is a reference to goods in transit and deals with the rule of evidence. Indeed the expression “in transit” establishes a legal framework for establishing whether suspected goods are destined for a country outside the European Union. In addition, rights holders may use certain information relating to consignors/consignees and the declarant or the holder of the goods and consignments in order to bring civil and/or criminal proceedings against, or seek compensation from, infringers.
Commission’s proposed changes to the Community Trade Mark Regulation and the Trade Mark Directive in combination of the New Customs Enforcement Regulation.
The new Regulation does not change the decision in the recent cases of Philips and Nokia (Joined Cases C-446/09 and C-495/09, Dec. 1, 2011). Indeed Customs will have power to seize goods in transit or placed under a suspensive procedure where there is a substantial likelihood that the goods will be re-routed to sale on the EU market.
However, if the proposed Community Trade Mark Regulation and the Trade Mark Directive are adopted, article 9(5) of the new Regulation states: “The proprietor of a European trade mark shall also be entitled to prevent all third parties from bringing goods, in the context of commercial activity, into the customs territory of the Union without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorization a trade mark which is identical to the European trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark.” This is designed to overcome the effect of the European Court of Justice’s (CJEU) decision since those proposals provide that goods entering the customs territory of the EU can infringe trade mark registrations, even when they have not been released for circulation within the European Union, where such goods “bear without authorization a trade mark which is identical to [a trade mark] registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark”. Hence, counterfeit goods entering the customs territory of the EU would fall within the “counterfeit goods” definition in the New Regulation, even if they are in transit or placed under a suspensive customs procedure.