IP/C/W/636/Add.1  
 
25 October 201 8 
(18-6700) Page: 1/2 
Council for Trade -Related Aspects of  
Intellectual Property Rights  Original: English  
 
ENFORCEMENT OF INTEL LECTUAL PROPERTY RIG HTS REGARDING GOODS IN TRANSIT : 
QUESTIONS TO THE EUR OPEAN UNION  
COMMUNICATION FROM I NDIA 
Addendum  
The following communication, dated 18 October 2018 , is circulated at the request of India.  
 
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In continuation of its earlier communication (IP/C/W/636), India hereb y requests the European 
Union ( EU) to provide answers to the following que stions on the trademark issues : 
 
1. The EU has envisaged three situations covered by Regulation (EU) No. 608/2013 i n its answers 
to questions 2 and 4 against the questions posited by India, i.e. (a) when declared for release 
for free circulation, export or re -export, (b) when entering or leaving the customs territory of 
the EU, (c)  when placed under a suspension proced ure or in free zone or free warehouse. Can 
the EU clarify whether the goods entering the EU , which are not meant to be placed for free 
circulation in the EU market, will be included within the scope of the three situations mentioned 
herein above. Could the  EU further clarify if the goods in transit through the EU will be 
subjected to suspension of release or detention on suspicion of trademark infringement?  
 
2. If the goods -in-transit through the EU will be subjected to suspension of release or detention 
on suspicion of trademark infringement of an EU trademark holder, can the EU clarify whether 
the procedure of suspension of release or detention will be initiated based upon any 
information received in this regard from the relevant authorities in the country o f destination? 
If above procedure for suspension of release or detention is not based upon any information 
received from the relevant authorities in the country of destination, can the EU clarify the 
basis of initiating the procedure for suspension of rele ase or detention of the goods -in-transit?  
 
3. Article 18 of Regulation (EU) 608/2013 read with paragraph 3.1 of the Commission Notice 
(EU) 2016/C 244/03 provides for suo moto  detention of goods suspected for infringing 
intellectual property rights. Can the EU  clarify any and all criteria based upon which the 
customs authorities in the EU can proceed with suo moto detention of the goods -in-transit 
suspected of trademark infringement? Further, in case the detention of goods is proved wrong 
subsequently, will the re be compensation to the owner of the goods?  
 
4. In view of the repeal of the Regulation (EU) 207/2009 read with Regulation (EU) 2424/2015, 
and the promulgation of new Regulation (EU) 2017/1001, c an the EU clarify the status of the 
Commission Notice (EU) 20 16/C 244/03?  
 
  IP/C/W/636/Add.1  
 
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  5. Paragraph 3.1 of the Commission Notice (EU) 2016/C244/03 states that "… The detention of 
goods means holding back the goods and allowing the right holder to have access to 
confidential information and inspect the goods in question, … ". In this context, can the EU 
clarify:  
 
a) The source of the said confidential information;  
b) In what circumstances the said confidential information will be collected and shared with 
the right holders;  
c) The nature and details of confidential information that may be  shared with the right 
holders;  
d) At what stage such confidential information will be shared with the right holders;  
e) The purpose of giving the right holders the access to such confidential information and to 
inspect the goods in question; and  
f) How does the  legal regime of the EU ensure that the sharing of confidential information 
with the right holders is not subjected to misuse?  
6. With reference to Article 23 of Regulation (EU) 608/2013 with respect to destruction of goods, 
can the EU clarify:  
 
a. Under what ci rcumstances does the aforementioned provision becomes applicable?  
b. Where the declarant or holder of the goods suspected of infringing trademark right of a 
EU trademark holder does not confirm his agreement or opposition to destruction of goods 
under Articl e 23 of Regulation (EU) 608/2013, do the customs authorities necessarily 
destroy the goods in question?  
c. Whether the notification of destruction of goods is issued in all cases where the customs 
authorities cease or detain the goods suspected of infringing trademark rights? Is there 
any specimen of such notification that the EU can provide?  
d. Whether the reference to "working days " in this provision relates to the working days as 
per the EU or the country of export?  
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