IP/N/6/EU/1  
 
10 July 2019  
(19-4579) Page: 1/6 
Council for Trade -Related Aspects  
of Intellectual Property Rights  Original: English  
 
CHECKLIST OF ISSUES ON ENFORCEMENT1 
RESPONSES FROM EUROPEAN UNION  
Introduction  
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).  
 
 
Civil and Administrative Procedures and Remedies  
 (a)  Civil judicial procedures and remedies  
 
1.  Specify the courts w hich have jurisdiction over IPR infringement cases.  
 
 
 
2.  Which persons have standing to assert IPRs? How may they be represented? Are 
there  requirements for mandatory personal appearances before the court by the right 
holder?   
 
 
 
3.  What authority do the judicial authorities have to order, at the request of an 
opposing party, a party to a proceeding to produce evidence which lies within its control?  
 
 
 
4.  What means exist to identify and protect confidential information brought forward 
as evidence?  
 
 
 
5.  Describe the remedies that may be ordered by the judicial authorities and criteria, 
legislative  or jurisprudential, for their use:  
 
- injunctions;  
 
-  damages, including recovery of profits, and expenses, including attorney 's 
fees;  
 
-  destruction or other disposal of infringing goods and materials/implements for 
their  production;  
 
-  any other remedies.  
 
 
                                                
1 Document IP/C/5  IP/N/6/EU/1  
 
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6.  In what circumstances, if any, do judicial authorities have the authority to order the 
infringer  to inform the right holder of the identity of third persons involved in the 
production and  distribution of the goods or services found to be infringing and of their 
channels of distribution?  
 
 
 
7.  Describe provisions relating to the in demnification of defendants wrongfully 
enjoined. To  what extent are public authorities and/or officials liable in such a situation 
and what "remedial  measures " are applicable to them?  
 
 
 
8.  Describe provisions governing the length and cost of proceedi ngs. Provide any 
available data on the actual duration of proceedings and their cost.  
 
 
 
(b)  Adminis trative procedures and remedies  
 
9.  Reply to the above questions in relation to any administrative procedures on the 
merits and  remedies that may result from these procedures.  
 
 
 
Provisional Measures  
(a)  Judicial measures  
 
10.  Describe the types of provisional measures that judicial authorities may order, and 
the legal  basis for such authority.  
 
 
 
11.  In what circumstances may such measures be ordered inaudita altera parte ? 
 
 
 
12.  Describe the main procedures for the initiation, ordering and maintenance in force 
of provisional  measures, in particular relevant time -limits and safeguards to protect the 
legitimate interests  of the defendant.  
 
 
 
13. Describe provisions governing the length and cost of proceedings. Provide any 
available data  on the actual duration of proceedings and their cost.  
 
 
 
(b)  Administrative measures  
 
14.  Reply to the above questions in relation to any administrative provisio nal measures.  
 
 
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  Special Requirements Related to Border Measures  
15.  Indicate for which goods it is possible to apply for the suspension by the customs 
authorities  of the release into free circulation, in particular whether these procedures are 
available also in respect of goods which involve infringements of intellectual property 
rights other than  counterfeit trademark or pirated copyright goods as defined in the TRIPS 
Agreement (footnote  to Article 51). Specify, together with relevant criteria, any impor ts 
excluded from the application  of such procedures (such as goods from another member 
of a customs union, goods in transit  or de minimis imports). Do the procedures apply to 
imports of goods put on the market in  another country by or with the consent of the right 
holder and to goods destined for exportation?  
 
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 s 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 territor y of the Union; (c) placed under suspensive proceduresi) 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 regimeii; 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 authori zed by a right -holder to manufacture a certain quantity of 
goods, in excess of the quantities agreed between that person and the right -holder.  
 
16.  Provide a description of the main elements of the procedures relating to the 
suspension of the  release of goods by customs authorities, in particular the  competent 
authorities (Article 51),  the requirements for an application (Article 52) and various 
requirements related to the duration  of suspension (Article 55). How have Articles 53 
(security or equivalent assurance), 56  (indemnification of the importer and of the owner 
of the goods) and 57 (right of inspection  and information) been implemented?  
 
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 U nion 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 wel l 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.  
 
                                                
i 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 com prise 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.  
 
ii Art. 2 54 of the UCC  
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  Goods susp ected 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 ten 
working days, or three  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 agreem ent 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 proceeding s (within the deadlines of ten working days, or three  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 infrin ged. 
 
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 consignmentsiii 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 w hich 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 cu stoms 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, t opography 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 
authori zed precautionary measures;  
 
(c) all customs formalities have been completed.  
 
The customs authorities shall giv e 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. The y 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 
                                                
iii Art. 26 of the Regulation  IP/N/6/EU/1  
 
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  samples to the customs authorities on completion of the analysis, at the latest before the goods ar e 
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 ha s 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 omi ssion 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 infrin ge 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.  
 
17.  Describe provisions governing the length and cost of proceedings. Provide any 
available data  on the actual duration of proceedings and their cost. How long is the validity 
of decisions  by the competent authorities for the suspension of the release of goods into 
free circulation?  
 
The appli cation 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 applicat ion 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 on e described under question  16 
above.  
 
18.  Are competent authorities required to act upon their own initiative and, if so, in what  
circumstances? Are there any special provisions applicable to ex officio action?  
 
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.  
 
19.  Descr ibe the remedies that the competent authorities have the authority to order 
and any criteria  regulating their use.  
 
Regulation (EU) No 608/2013 allows customs authorities to detain goods suspected of infringing an 
IPR that are, or should have been, under c ustoms supervision or control. Any other remedies that 
the competent authorities have the authority to order come within the competence of the member 
States.  
 
 
Criminal Procedures  
20.  Specify the courts which have jurisdiction over criminal acts of infrin gement of IPRs.  
21.  In respect of which infringements of which intellectual property rights are criminal 
procedures and penalties available?  
22.  Which public authorities are responsible for initiating criminal proceedings? Are they 
required  to do this on  their own initiative and/or in response to complaints?  
23.  Do private persons have standing to initiate criminal proceedings and, if so, who?  IP/N/6/EU/1  
 
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  24.  Specify, by category of IPR and type of infringement where necessary, the penalties 
and other remedies that  may be imposed:  
-  imprisonment;  
-  monetary fines;  
- seizure, forfeiture and destruction of infringing goods and materials and 
implements for their production;  
- other.  
25.  Describe provisions governing the length and any cost of proceedings. Provide a ny 
available  data on the actual duration of proceedings and their cost, if any.  
 
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.  
 
 
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