Lista de cuestiones sobre la observancia en el marco del párrafo 2 del artículo 63 del Acuerdo sobre los ADPIC - Ver detalles del documento

European Union

EU notification with regard to the updated IPR enforcement checklist (questions 15-25), updating the earlier version notified some time ago (document IP/N/6/EEC/1).

 

 

 

a) Procedimientos y recursos judiciales civiles

b) Procedimientos y remedios administrativos

a) Medidas judiciales

b) Medidas administrativas

Regulation (EU) No 608/2013 (the “Regulation”) empowers customs authorities to detain goods suspected of infringing an intellectual property rights (IPR) conferred by EU or national law.

The IPR covered are trademarks, designs, patents, copyright and related rights, supplementary protection certificates for medicinal products and for plant protection products, plant variety rights, geographical indications, trade names, topographies of semiconductor products and utility models.

As long as the goods are, or should have been, subject to customs supervision or customs control (e.g. they are: (a) declared for release for free circulation, export or re-export; (b) entering or leaving the customs territory of the Union; (c) placed under suspensive procedures[1]) the customs can detain them in case of a suspicion of IPR infringement.

On the contrary, the Regulation does not apply to: goods that have been released for free circulation under the end-use regime[2]; goods of a non-commercial nature contained in travellers’ personal luggage; goods that have been manufactured with the consent of the right-holder or goods manufactured, by a person duly authorised by a right-holder to manufacture a certain quantity of goods, in excess of the quantities agreed between that person and the right-holder.

[1] After the adoption of the Union Customs Code with Regulation EU No 952/2013 (the “UCC”), these procedures are referred to as “special procedures” and they encompass the following situations:

(a) transit, which shall comprise external and internal transit;

(b) storage, which shall comprise customs warehousing and free zones;

(c) specific use, which shall comprise temporary admission and end-use;

(d) processing, which shall comprise inward and outward processing.

[2] Art. 254 of the UCC

 

Each EU Member State has a customs department competent to receive and process applications for actions. The IPR holder chooses whether to file a national or a Union application for action (the only conditions to be met are that the IPR holder is entitled to submit the application and that a Union application can only be submitted for Union rights).

The holder of the IPR or the person authorized to use it (as well as the representative) shall prove, at the time of the application, their status, the rights to be enforced, shall describe the goods in question in sufficient detail and provide all information relevant for customs authorities’ risk analysis. They must have protected their IPR in the Member State where application for action is made by means of either a national, regional or an international instrument.

The competent customs department shall notify the applicant of its decision granting or rejecting the application within 30 working days of the receipt of the application. In the event of rejection, the competent customs department shall provide reasons for its decision and include information on the appeal procedure.

Goods suspected of infringing an intellectual property right may be destroyed under customs control, without the need to determine if an intellectual property right has been infringed under the law of the Member State where the goods are found, when:

-           the right-holder involved confirmed in writing to the customs authorities (within 10 working days, or 3 working days in the case of perishable goods, of notification of the suspension of the release or the detention of the goods) that, in his conviction, an intellectual property right has been infringed, together with his agreement to the destruction; and

-           the declarant or the holder of the goods has confirmed in writing to the customs authorities his agreement to the destruction within the same deadlines.

If the declarant or the holder of the goods does not confirm his agreement in writing nor notifies to the customs authorities his opposition to the destruction, customs authorities may deem the declarant or the holder of the goods to have confirmed his agreement to the destruction of the goods.

If the declarant or the holder of the goods explicitly opposes the destruction or if his tacit consent cannot be presumed, the customs authorities shall immediately notify the right-holder who shall initiate proceedings (within the deadlines of 10 working days, or 3 working days in the case of perishable goods, of notification of the suspension of the release or the detention of the goods) in order to determine whether an intellectual property right has been infringed.

Where the conditions and deadlines mentioned above are not met, the customs authorities shall grant the release of the goods or put an end to their detention.

A simplified procedure for the destruction of small consignments[1] has been introduced with the aim to alleviate the burden on customs authorities and right-holders in the context of booming internet sales. This procedure provides for the possibility to destroy non-perishable goods, which are suspected of being counterfeit or pirated goods and which are transported in small consignments, upon the express or presumed agreement of the sole declarant or holder of the goods without the need to involve the holder of the decision granting an application for action (the “holder of the decision”). The customs authorities shall apply this procedure if right-holders opted for it when filing their applications for action.

Where the customs authorities have been notified of the initiation of proceedings to determine whether a design, patent, utility model, topography of semiconductor product or plant variety right has been infringed, the declarant or the holder of the goods may request the customs authorities to release the goods or put an end to their detention before the completion of those proceedings. The customs authorities shall release the goods or put an end to their detention only where all of the following conditions are fulfilled:

(a) the declarant or the holder of the goods has provided a guarantee that is of an amount sufficient to protect the interests of the holder of the IPR;

(b) the authority competent to determine whether an IPR has been infringed has not authorised precautionary measures;

(c) all customs formalities have been completed.

The customs authorities shall give the holder of the decision and the declarant or the holder of the goods the opportunity to inspect the goods whose release has been suspended or which have been detained.

The customs authorities may take samples that are representative of the goods. They may provide or send such samples to the holder of the decision, at the holder’s request and strictly for the purposes of analysis and to facilitate the subsequent procedure in relation to counterfeit and pirated goods. Any analysis of those samples shall be carried out under the sole responsibility of the holder of the decision. The holder of the decision shall, unless circumstances do not allow, return the samples to the customs authorities on completion of the analysis, at the latest before the goods are released or their detention is ended.

The customs authorities shall, upon request and where available to them, inform the holder of the decision of the names and addresses of the consignee, the consignor and the declarant or the holder of the goods, of the customs procedure and of the origin, provenance and destination of the goods whose release have been suspended or which have been detained.

Where a procedure duly initiated pursuant to  Regulation (EU) No 608/2013 is discontinued, owing to an act or omission on the part of the holder of the decision, where samples are either not returned or are damaged and beyond use, owing to an act or omission on the part of the holder of the decision, or where the goods in question are subsequently found not to infringe an intellectual property right, the holder of the decision shall be liable towards any holder of the goods or declarant, who has suffered damage in that regard, in accordance with applicable national legislation.

[1] Art. 26 of the Regulation

 

The application for action is submitted at no cost for the applicant and once granted it has a validity of 1 (one) year maximum unless earlier expired due to the lack of validity of the related IPR in the meantime.

The validity of the decision granting an application for action can be extended upon request of the applicant and the list of IPRs covered can be amended; all the above free of charge for the applicant.

The customs authorities retain the right to revoke, suspend or not renew the application for action when the holder of the decision granting the application for action misuses the information provided by the customs authorities for purposes not foreseen by Regulation (EU) No 608/2013.

The procedure to detain goods suspected of infringing an IPR is the one described under question 16 above.

Where customs authorities suspect, on the basis of reasonable indications, that goods under their supervision infringe intellectual property rights, they may suspend the release of or detain the goods upon application for action or at their own initiative (ex officio). In the case of ex officio action, an application for action must be submitted to the competent customs department within four working days of the notification of the suspension of the release or detention of the goods in order to maintain their suspension or detention.

Regulation (EU) No 608/2013 allows customs authorities to detain goods suspected of infringing an IPR that are, or should have been, under customs supervision or control. Any other remedies that the competent authorities have the authority to order come within the competence of the Member States.

 

Criminal matters fall within the competence of the EU Member States. Article 30 of Regulation (EU) No 608/2013 (the “Regulation”) provides that the Member States shall ensure that the holders of decisions comply with the obligations set out in the Regulation, including, where appropriate, by laying down provisions establishing penalties and that the penalties provided for shall be effective, proportionate and dissuasive.

 

Criminal matters fall within the competence of the EU Member States. Article 30 of Regulation (EU) No 608/2013 (the “Regulation”) provides that the Member States shall ensure that the holders of decisions comply with the obligations set out in the Regulation, including, where appropriate, by laying down provisions establishing penalties and that the penalties provided for shall be effective, proportionate and dissuasive.

 

Criminal matters fall within the competence of the EU Member States. Article 30 of Regulation (EU) No 608/2013 (the “Regulation”) provides that the Member States shall ensure that the holders of decisions comply with the obligations set out in the Regulation, including, where appropriate, by laying down provisions establishing penalties and that the penalties provided for shall be effective, proportionate and dissuasive.

 

Criminal matters fall within the competence of the EU Member States. Article 30 of Regulation (EU) No 608/2013 (the “Regulation”) provides that the Member States shall ensure that the holders of decisions comply with the obligations set out in the Regulation, including, where appropriate, by laying down provisions establishing penalties and that the penalties provided for shall be effective, proportionate and dissuasive.

 

Criminal matters fall within the competence of the EU Member States. Article 30 of Regulation (EU) No 608/2013 (the “Regulation”) provides that the Member States shall ensure that the holders of decisions comply with the obligations set out in the Regulation, including, where appropriate, by laying down provisions establishing penalties and that the penalties provided for shall be effective, proportionate and dissuasive.

 

Criminal matters fall within the competence of the EU Member States. Article 30 of Regulation (EU) No 608/2013 (the “Regulation”) provides that the Member States shall ensure that the holders of decisions comply with the obligations set out in the Regulation, including, where appropriate, by laying down provisions establishing penalties and that the penalties provided for shall be effective, proportionate and dissuasive.