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European Commission Publishes Notice on the Customs Enforcement of Intellectual Property Rights Concerning Goods Brought into the EU Customs Territory

On 5 July 2016, the “Commission notice on the customs enforcement of Intellectual Property Rights concerning goods brought into the customs territory of the Union without being released for free circulation including goods in transit” (C/2016/4032) was published in the EU’s Official Journal.

The Notice replaces the “Guidelines of the European Commission concerning the enforcement by EU customs authorities of intellectual property rights with regard to goods, in particular medicines, in transit through the EU”, which were published on 1 February 2012. These original Guidelines provided clarifications on the application of Council Regulation 1383/2003 and its implementing Regulation 1891/2004 with regard to goods in transit through the territory of the EU.

More specifically, the Guidelines addressed the specific concerns that had been raised by India and Brazil at the World Trade Organization (WTO) with regard to medicines in genuine transit through the EU which were covered by a patent right in the EU, and took account of the findings of the Court of Justice of the EU in its judgment of 1 December 2011 related to joined cases C-446/09 and C-495/09 (Philips/Nokia).

After publishing the original Guidelines, Council Regulation 1383/2003 was replaced by Regulation 608/2013 concerning customs enforcement of intellectual property rights (IPRs), and the “trade mark package” was adopted. It is precisely due to these two developments that the Commission deemed it appropriate to update its original Guidelines, resulting in the publication of the Commission Notice on 5 July 2016.

Regulation 608/2013: Regulation 608/2013, which entered into force on 1 January 2014, provides conditions and procedures for customs authorities to enforce IPRs with regard to goods liable to customs supervision or customs control. In comparison to its predecessor, the Regulation notably expanded the range of covered IPR infringements, adjusted the procedures in order to reduce administrative burdens and costs, and included measures to ensure that high quality information is provided to customs and that the interests of legitimate traders are protected. The purpose of the Regulation is to address the increase in counterfeit and pirated goods coming into the EU by strengthening the enforcement of IPRs to the benefit of right holders, the EU economy and consumer safety.

Trade mark package: The “trade mark package” (Regulation 207/2009, as amended by Regulation 2015/2424 and Directive 2015/2436) improved the rights of the proprietor of a trade mark, registered at EU level as an EU trade mark or at Member State level as a national trade mark. Amongst others, the Regulation extends to the proprietors of such trade marks the right to prevent third parties from bringing goods in the course of trade into the EU, even though those goods are not intended for the EU market and are thus not released for free circulation. In order to do so, the goods must, without authorisation, bear a trade mark which is identical to, or which cannot be distinguished in its essential aspects from, a registered trade mark. The objective of the trade mark package is to strengthen trade mark protection and combat counterfeiting more effectively and keep in line with the EU’s obligations at the WTO.

Commission Notice 2016/4032: Before going into substance, this new Notice, published on 5 July 2016, emphasises that Regulation 608/2013 “must be applied taking into account the need to promote effective and adequate protection of intellectual property rights and to ensure that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade”.

Afterwards, the Notice is divided into two sections, namely (1) “Goods infringing an intellectual property right in the context of customs enforcement” and (2) “Goods suspected of infringing an intellectual property right – customs enforcement”.

Under the first section, the Notice first recalls that while Regulation 608/2013 sets out the conditions and procedures for action by the customs authorities with regard to goods suspected of infringing an IPR which are under their supervision or control, the procedural powers of customs authorities to ascertain whether goods are “goods suspected of infringing an intellectual property right” are limited.

As such, Regulation 608/2013 only contains procedural rules for customs authorities, without setting out any criteria for ascertaining the existence of an infringement of an IPR. Indeed, the latter is a matter for substantive intellectual property law, as interpreted by the competent national courts and the Court of Justice of the EU. Afterwards, the Notice indicates (1) when IPRs may be infringed for goods coming from third countries without being released for free circulation and (2) how the new provisions of the “trade mark package” concerning the treatment of identical or essentially identical trade mark goods brought into the Union territory are applied at the level of customs authorities.

Under the second section, the Notice recalls that, for goods suspected of infringing IPRs, customs authorities may, in accordance with the Union Customs Code, “carry out any control on non-Union goods brought into the customs territory of the Union which they find necessary”. The Notice clarifies that such control must be “proportionate” and “carried out in accordance with risk analysis criteria”.

Moreover, the Notice states that “customs authorities are also competent to detain goods suspected of infringing an intellectual property right that are, or should have been, subject to customs supervision or customs control within the customs territory of the Union”. Subsequently, the Notice addresses in more detail (1) the treatment of identical or essentially identical trade mark goods, (2) the treatment of medicines and (3) the cooperation with the right holders.

In sum, the Notice recognises the important role that customs administrations have when enforcing IPRs at the EU borders. It should be noted that the EU customs authorities are known for their high level of enforcement of IPRs. In 2014, the EU customs authorities opened more than 95,000 detention cases for a total of nearly 36 million articles, with a retail value representing over 617 million EUR.

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