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BORDER MEASURES:
The offensive against IP offences ?
AROPI, Genève, 30/11/2010
Marius Schneider Attorney-at-law
EEMAN & Partners
www.EemanPartners.com
OUTLINE
Introduction : factual background
Regulation (EC) 1383/2003 on border measures
Advantages and disadvantages
Conclusion
www.EemanPartners.com
OUTLINE
Introduction : factual background
Regulation (EC) 1383/2003 on border measures
Advantages and disadvantages
Conclusion
www.EemanPartners.com
INTRODUCTION
5 - 7 % of International trade : counterfeited or pirated
statistics: http://ec.europa.eu/taxation_customs/customs/customs_controls/counterfeit_piracy/index_en.htm
all sectors of the economy
threat to consumers’ health and safety
nuisance to the society (loss of taxes and jobs, unhealthy economic climate, organized
crime)
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INTRODUCTION
not all countries take the threat equally serious…
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OUTLINE
Introduction : factual background
Regulation (EC) 1383/2003 on border measures
Advantages and disadvantages
Conclusion
www.EemanPartners.com
Regulation 1383/2003 on border measures
official title….
Regulation (EC) 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
Outline …
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BORDER MEASURES Regulation (EC) 1383/2003 applies to :
» most IPRs (art 2) (quasi-identical) trade marks (copies of) designs and copyright goods infringing patents and
supplementary protection certificates goods infringing plant variety rights goods infringing geographical indications
» all customs regimes (art 1)
imports, exports, transit, transshipment (CJEU : Class International and Montex v. Diesel v. Rolex question asked for Nokia Philips), smuggling
» Exceptions (art 3)
grey market goods overruns and other violations of a license travelers personal baggage
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BORDER MEASURES
STEP 1 customs detain good» further to an application for customs
action (art 5 – 7) http://ec.europa.eu/taxation_customs/customs/customs_controls/counterfeit_piracy/index_en.htm (application forms and special forms)
persons entitled to file applications competent customs department mandatory information, additional information, declaration accepting liability national application for action v. Community application for action (CJEU Davidoff)
» on their own initiative (ex officio) (art 4) an application for action has to be filed within 3 working days
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BORDER MEASURES
STEP 2 information to be provided to the right- holder once suspect goods are detained by customs
» type of goods, quantities, origin and destination in order to allow the right-holder to identify whether the
goods are infringing » inspection of samples or digital pictures
Opinion AG Colomer : Beecham (8/4/2008)
» names and addresses of persons involved in the traffic in view of introducing proceedings to determine whether an intellectual property right has been infringed
CJEU : Adidas
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BORDER MEASURES
STEP 3 right-holder confirms infringement
» simplified procedure (art 11) right-holder informs customs within a term (3/10 working days) that the goods infringe IPR written agreement of the declarant, owner, or holder of the goods to abandon them for destruction
agreement shall be presumed if no opposition within this
term ( - CJEU Schenker ) destruction at the expense and under the responsibility of the right-holder destruction preceded by the taking of samples that are kept by customs (for potential liability issues) settlements ?
» proceedings to determine whether an IPR has been infringed under national law (art 13)
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BORDER MEASURES
STEP 3 right-holder confirms infringement» simplified procedure (art 11)» proceedings to determine whether an
IPR has been infringed under national law (art 13) right-holder can choose :
civil proceedings (total control of the right-holder, can always be settled, costly)
criminal proceedings (in the hands of public prosecutor, deterrent, less costly) customs offence procedure conservatory measures
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BORDER MEASURES
STEP 4 destruction of the goods and effective, proportionate and dissuasive sanctions of the infringers
CJEU: Rolex case and Schenker case
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OUTLINE
Introduction : factual background
Regulation (EC) 1383/2003 on border measures
Advantages and disadvantages
Conclusion
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ADVANTAGES - DISADVANTAGES
Regulation 1383/2003
Advantages
Seizure and destruction of large quantities before they come on the market
Cost efficient and accessible to all right-holders (also SME’s)
Disadvantages
Problems with goods in transit
Goods excluded (baggage, parallel imports, overruns) AG Colomer
Counterfeiters calculate certain losses in their business model
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OUTLINE
Introduction : factual background
Regulation (EC) 1383/2003 on border measures
Advantages and disadvantages
Conclusion
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CONCLUSION
Customs enthusiastically accepted new powers
application for Customs action increasingly important
forms readily available efficiency and success of Customs work will depend on information provided by right-holders
‘new Member States’ have excellent results
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CONCLUSION
www.BorderMeasures.com
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Marius Schneiderattorney-at-law [email protected]
Bld de la Cambre, 33 bte 81000 BruxellesTel. : +32 [0]2-672 58 00Fax : +32 [0]2-672 68 31www.EemanPartners.com
Thank you !
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BORDER MEASURES
Regulation 1383/2003 and its relation to national law
– relies on national law for its effective functioning
» ex: procedure and rules to be applied to the proceedings to determine whether an IPR has been infringed ; scope of protection of a national IPR
– compels Member States to adopt certain measures
» ex: designate customs department competent to receive application for action ; determine security to be provided to obtain the release of the goods under (art 14)
– encourages Member States to enact measures» ex: simplified procedure
– allows Members States to legislate in areas not covered
» ex: procedure analogous to the Regulation for IPRs not covered (commercial names) or situations not covered (parallel imports); customs offence
