22.1.85 Official Journal of the European Communities No C 20/7 
II 
(Preparatory Acts) 
COMMISSION 
Proposal for a Council Regulation laying down measures to discourage the release for 
free circulation of counterfeit goods 
COM(84) 705 final 
(Submitted by the Commission to the Council on 4 January 1985) 
(85/C 20/04) 
THE COUNCIL OF THE EUROPEAN 
COMMUNITIES, 
Having regard to the Treaty establishing the 
European Economic Community, and in particular 
Articles 113 and 235 thereof, 
Having regard to the proposal from the Commission, 
Having regard to the opinion of the European 
Parliament, 
Having regard to the opinion of the Economic and 
Social Committee, 
Whereas trade in counterfeit goods prejudices the 
rights of law-abiding manufacturers and traders and 
misleads consumers; whereas importation into the 
Community of counterfeit goods from non-member 
countries should be discouraged and, to that end, 
measures should be adopted to combat such im­
portation without impeding the freedom of legitimate 
trade through the creation of non-tariff barriers; 
Whereas such measures must be of such a kind as to 
strengthen the protection of trade mark owners; 
whereas it is therefore necessary to lay down 
common rules which determine the procedure to be 
followed when applying for action to be taken by the 
customs authorities and the conditions governing the 
taking of such action by the customs authorities; 
whereas it should be provided, in particular, that a 
trade mark owner may lodge an application in writing 
for suspension of the release of counterfeit goods 
entered for free circulation where he has valid 
grounds for believing that such goods infringing his 
rights are to be imported; 
Whereas it should also be provided that, where it is 
established that goods the release of which has been 
suspended are counterfeit, they shall be disposed of in 
a manner which deprives those responsible for the 
importation of such goods of the economic benefits of the transaction and provides an effective deterrent 
against engaging in further transactions of the same 
kind; 
Whereas the provisions of this Regulation do not 
apply to goods originating in the Member States or 
which are already in free circulation within the 
meaning of Articles 9 and 10 (1) of the Treaty and 
which are traded between Member States; 
Whereas uniform application of the common rules 
laid down by this Regulation must be ensured and to 
that end a Community procedure must be provided 
enabling measures implementing these rules to be 
adopted within appropriate periods; 
Whereas the provisions of this Regulation are 
designed to discourage international trade in counter­
feit goods; whereas the specific provisions of the 
Treaty do not confer on the Community institutions 
the power to adopt all the measures which are 
necessary to achieve this objective, in particular with 
regard to the confiscation of counterfeit goods; 
whereas it is therefore necessary to base the 
provisions of this Regulation also on Article 235, 
HAS ADOPTED THIS REGULATION: 
Article 1 
1. This Regulation lays down: 
(a) the conditions under which the customs auth­
orities shall suspend the release of goods from 
non-member countries entered for free circulation 
where they are suspected of being counterfeit, 
and 
(b) the measures which shall be taken by the 
competent authorities with regard to these goods 
where it has been established that they are indeed 
counterfeit. 
2. For the purpose of this Regulation, 'counterfeit 
goods' means any goods bearing without author-
No-C 20/8 Official Journal of the European Communities 22.1.85 
ization a trade mark registered in accordance with 
Community law or the law of the Member State in 
which the goods are entered for free circulation. 
TITLE I 
Applications for action by the customs authorities 
Article 2 
1. In each Member State, the owner of a trade 
mark, hereinafter called the trade mark owner, or his 
representative, may lodge an application in writing 
with the customs authorities of that Member State for 
suspension of the release of counterfeit goods entered 
for free circulation, where he has valid grounds for 
suspecting that the importation of such goods 
infringing the trade mark owner's rights is 
contemplated. 
Where the trade mark in question is a Community 
trade mark, the owner thereof may lodge the 
abovementioned application in writing with the 
Commission of the European Communities. 
2. An application for action must contain all such 
information as is necessary to enable the customs 
authorities to take effective action and must be 
accompanied by proof of the trade mark owner's 
right to protection against counterfeit goods. It must 
also indicate the factors on which the trade mark 
owner's suspicions are based. 
An application may be made in respect of one or 
more import operations and hence remain valid either 
for a fixed period, to be determined by the competent 
authorities of the Member State concerned or, where 
appropriate, by the Commission where the application 
was lodged with the latter, or for an indefinite period. 
Any period fixed may be extended on application to 
the authority which determined the initial period. 
3. The customs authorities or the Commission, 
according to the circumstances, shall decide on the 
application " and inform the person concerned 
accordingly. The applicant may be required to 
provide security in an amount sufficient to indemnify 
the competent authorities or compensate the importer 
for any loss or damage resulting from measures 
adopted by those authorities where goods in relation 
to which action is taken by the customs authorities 
pursuant to this Regulation are subsequently shown 
not to be counterfeit. The applicant may also be 
required to pay a sum to cover the administrative or 
legal costs resulting from the application. 4. Where examination of the application referred 
to in paragraph 1 shows that it does not contain the 
information necessary to enable the customs auth­
orities to take effective action or is not accompanied 
by sufficient evidence for it to be considered, the 
customs authorities or the Commission, according to 
the circumstances, shall refuse it and shall inform the 
person who lodged the application of such refusal. 
Article 3 
1. Applications found to be valid by the customs 
authorities of a Member State shall be forwarded 
immediately to the customs offices of the Member 
State which are liable to be concerned with imports of 
the counterfeit goods referred to in the application. 
2. Applications found to be valid by the 
Commission shall be forwarded immediately to the 
customs authorities of the Member States referred to 
in the application. The customs authorities of each 
Member State concerned shall forward such 
applications to the customs offices referred to in 
paragraph 1. 
TITLE II 
Conditions governing action by the customs 
authorities 
Article 4 
1. Where a customs office to which an application 
has been transmitted pursuant to Article 3 establishes 
that goods entered for free circulation correspond to 
the description of the counterfeit goods contained in 
that application, it shall suspend the release thereof, 
and inform the importer accordingly. The customs 
office shall also inform the trade mark owner of the 
measure. 
2. Whether the goods are counterfeit shall be 
determined in accordance with Community law 
where it is applicable to the case in point, and where 
it is not, in accordance with the law of the Member 
State in the territory of which they were entered for 
free circulation. 
The criteria applied to establish whether the goods 
are counterfeit shall be the same as those used to 
determine whether goods produced in that Member 
State are counterfeit. Decisions taken by the 
competent authority shall set out the grounds on 
which they are based. 
3. Release of the goods shall be suspended until it 
is conclusively established whether or not they are 
counterfeit. However, where suspension of the release 
22.1. 85 Official Journal of the European Communities No C 20/9 
of goods referred to in paragraph 1 is confirmed by 
an interim decision of the competent authority and 
further proceedings which the importer is not entitled 
to initiate are required before a final decision, can be 
taken, the importer may, by application made in 
writing and provided all the import formalities have 
been completed, secure the release of the goods if 
such further proceedings are not initiated within 10 
working days from the date on which their release 
was suspended. 
4. Provided all the other import formalities have 
been completed, goods shall also be released as soon 
as proof is furnished to the customs office that it 
has been conclusively established that they are not 
counterfeit. 
Article 5 
1. Member States shall adopt the measures 
necessary to allow the competent authorities to 
confiscate goods the release of which has been 
suspended pursuant to Article 4 where it is established 
that they are counterfeit. 
Confiscated goods shall be disposed of outside the 
channels of commerce in a manner which minimizes 
harm to the trade mark owner. The competent auth­
orities, may, however, employ methods other than the 
disposal of the confiscated goods outside the channels 
of commerce on condition that they constitute an 
effective deterrent to trade in counterfeit goods. 
2. Measures other than confiscation may, in 
exceptional cases, be taken by the competent auth­
orities where they effectively deprive those 
responsible for the importation of the goods of the 
economic benefits of the transaction and constitute an 
effective deterrent against engaging in further 
transactions of the same kind. 
TITLE III 
Final provisions 
Article 6 
1. The acceptance of an application lodged in 
accordance with Article 2 shall not entitle the trade 
mark owner to compensation where counterfeit goods are not detected by a customs office and their release 
therefore is not suspended in the manner provided for 
in Article 4. 
2. Exercise by a customs office of the powers 
conferred on it in regard to combating counterfeit 
goods shall render it liable to the importer or any 
other person holding rights with respect to the goods 
entered for free circulation in the event of his 
suffering loss or damage as a result of its action only 
under the conditions laid down generally by the law 
of the Member State concerned. 
3. The civil liability of the trade mark owner shall 
be governed by the law of the Member State in which 
the goods in question were entered for free circu­
lation. 
Article 7 
This Regulation shall not apply to small quantities of 
goods released for free circulation for personal use 
and not intended for sale. 
Article 8 
1. The Committee on General Customs Rules 
provided for in Article 24 of Council Directive 
79/695/EEC (') may examine any question 
concerning the application of this Regulation which is 
raised by its chairman either on his own initiative or 
at the request of a Member State. 
2. The provisions required for applying this Regu­
lation shall be adopted in accordance with the 
procedure laid down in Article 26 (2) and (3) of 
Directive 79/695/EEC. 
Article 9 
This Regulation shall enter into force on 1 July 1986. 
This Regulation shall be binding in its entirety and 
directly applicable in all Member States. 
O OJ No L 205, 13. 8. 1979, p. 19.