Goods infringing intellectual property rights

To better protect consumers and right-holders, the Council adopted a new Regulation to combat counterfeiting and piracy. The Regulation clarifies the means and conditions for customs action against goods suspected of infringing intellectual property rights.

ACT

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.