Proposal for a Council Regulation (EC) amending Regulation (EC) No 3295/94 laying down measures to prohibit the release for free circulation, export, re-export or entry for a suspensive procedure of counterfeit and pirated goods (98/C 108/10) COM(98) 25 final - 98/0018 (ACC)

(submitted by the Commission on 29 January 1998)

THE COUNCIL OF THE EUROPEAN UNION,

Having regard to the Treaty establishing the European Community, and in particular Article 113 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, pursuant to Article 15 of Council Regulation (EC) No 3295/94 (1), conclusions should be drawn from the experience gained during the early years of its implementation with a view to improving the operation of the system it set up;

Whereas the marketing of counterfeit goods infringing patents on products or, where they concern patents on products, supplementary protection certificates for medicinal products as provided for in Council Regulation (EEC) No 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal products (2), as amended by the Act of Accession of Austria, Finland and Sweden, or supplementary protection certificates for plant protection products, as provided for in Regulation (EC) No 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products (3) causes serious injury to their holders and constitutes an unfair and unlawful business activity; whereas such goods should as far as possible be prevented from being placed on the market and measures should be adopted to that end to deal effectively with this unlawful activity without impeding the freedom of legitimate trade; whereas this objective is also being pursued through efforts being made along the same lines at international level;

Whereas, in order to guarantee the integrity of the Community's external frontier, the customs authorities should be permitted to take action against counterfeit, pirated and associated goods whatever their customs status; whereas the release for free circulation in the Community, entry for a suspensive procedure, re-export or placing in a free zone or free warehouse of such goods should therefore be prohibited; whereas moreover the customs authorities should be authorized to take action as soon as the said goods are brought into the Community;

Whereas, as regards suspensive procedures, free zones and free warehouses, re-export subject to notification and temporary storage, the customs authorities will act only where goods suspected to be counterfeit or pirated are discovered during a check;

Whereas Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (4), as amended by Regulation (EC) No 3288/94 (5), has established a system whereby right holders can, by means of a single procedure, obtain Community trade marks enjoying uniform protection and producing their effects throughout the Community;

Whereas to enhance the Community dimension of the said trade mark the administrative procedure for obtaining customs protection should be simplified;

Whereas trade mark holders should have access to a system whereby the granting of a single application for action by the competent authority in one Member State can bind one or more other Member States as well;

Whereas a single period of validity should be set in the interests of the uniform application of such decisions in the Member States concerned,

HAS ADOPTED THIS REGULATION:

Article 1

Regulation (EC) No 3295/94 is hereby amended as follows:

1. The title is replaced by the following:

'Council Regulation (EC) No 3295/94 of 22 December 1994 laying down measures concerning the entry into the Community and the export and re-export from the Community of goods infringing certain intellectual property rights`.

2. Article 1 is amended as follows:

(a) The second indent of paragraph 1(a) is replaced by the following:

'- found in the course of checks on goods under customs supervision within the meaning of Article 37 of Council Regulation (EEC) No 2913/92 of 12 October 1992 establishing the Community Customs Code (*) placed under a suspensive procedure within the meaning of Article 84(1)(a) of that Regulation, re-exported subject to notification or placed in a free zone or free warehouse within the meaning of Article 166 thereof;

(*) OJ L 302, 19.10.1992, p. 1.`

(b) Paragraph 2 is amended as follows:

(i) a fourth indent is added to point (a) as follows:

'- goods infringing, in the Member State in which the application for action by the customs authorities is made, a patent on a product under the law of that Member State or a supplementary protection certificate as provided for by Council Regulation (EEC) No 1768/92 (*) or Council Regulation (EC) No 1610/96 (**);

(*) OJ L 182, 2.7.1992, p. 1.

(**) OJ L 198, 8.8.1996, p. 30.`

(ii) Point (c) is replaced by the following:

'(c) "holder of a right": means the holder of a trade mark, a patent on a product or a certificate, as referred to in (a), and/or one of the rights referred to in (b), or any other person authorized to use that trade mark, patent on a product, certificate and/or right, or a representative thereof`.

(iii) The following points (e) and (f) are added:

'(e) "Community trade mark" means the trade mark defined in Article 1 of Regulation (EC) No 40/94 (*).

(f) "certificate" means the supplementary protection certificate provided for by Regulation (EEC) No 1768/92 or by Regulation (EC) No 1610/96.

(*) OJ L 11, 14.1.1994, p. 1.`

(c) Paragraph 3 is replaced by the following:

'3. Any mould or matrix which is specifically designed or adapted for the manufacture of a counterfeit trade mark or of goods bearing such a trade mark, of goods infringing a patent on a product or a certificate or of pirated goods shall be treated as "counterfeit or pirated goods", as the case may be, provided that the use of such moulds or matrices infringes the rights of the holder of the right in question under Community law or the law of the Member State in which the application for action by the customs authorities is made.`

(d) The first subparagraph of paragraph 4 is replaced by the following:

'This Regulation shall not apply to goods which bear a trade mark with the consent of the holder of that trade mark or which are protected by a patent on a product or a certificate, copyright or related right or a design right and which have been manufactured with the consent of the holder of the right but are placed in one of the situations referred to in paragraph 1(a) without the latter's consent.`

3. Article 2 is replaced by the following:

'Article 2

The entry into the Community, release for free circulation, export, re-export, placing under a suspensive procedure or placing in a free zone or free warehouse of goods found to be counterfeit or pirated on completion of the procedure provided for in Article 6 shall be prohibited.`4. Article 3 is amended as follows:

(a) The following text is added as the second subparagraph of paragraph 1:

'Where the applicant holds a Community trade mark, the application may seek action not only by the customs authorities of the Member State in which the application is lodged but by the customs authorities of one or more other Member States as well.`

(b) Paragraphs 3 and 4 are replaced by the following:

'3. Save where the second subparagraph of paragraph 1 is applied, the application must specify the length of the period during which the customs authorities are requested to take action.

Applications under the second subparagraph of paragraph 1 shall indicate the Member State or States in which the customs authorities are requested to take action.

4. The applicant may be charged a fee to cover the administrative costs incurred in dealing with the application.

The applicant or his representative may also be charged a fee in each of the Member States where the decision granting the application is effective to cover the costs incurred in implementing the said decision.

Such fees shall not be disproportionate to the service provided.`

(c) The following third subparagraph shall be inserted into paragraph 5:

'Where an application is submitted under the second subparagraph of paragraph 1 the said period shall be set at one year, but may be extended for a further year, at the right holder's request, by the service which took the original decision`.

(d) The following paragraph 9 is added:

'9. The provisions of paragraphs 1 to 8 shall apply mutatis mutandis to the extension of the decision on the original application.`

5. Article 5 is replaced by the following:

'Article 5

1. The decision granting the application by the holder of the right shall be forwarded immediately to the customs offices of the Member State which are liable to be concerned with the goods alleged in the application to be counterfeit or pirated.

2. Where an application is submitted under the second subparagraph of Article 3(1), the first indent of Article 250 of Regulation (EEC) No 2913/92 shall apply mutatis mutandis to the decision granting the said application and the decisions extending or repealing it.

The service which adopted those decisions shall forward certified copies thereof to the relevant service of the customs authority in the Member State or States where the applicant has requested that action be taken.

The Member State or States so notified shall immediately acknowledge receipt of the decisions referred to in the first subparagraph.

The period referred to in the third subparagraph of Article 3(5) shall run from the date on which the decision granting the application was adopted. The Member States to which the said decision is addressed may suspend implementation until the free referred to in the second subparagraph of Article 3(4) has been paid and the security referred to in Article 3(6) has been provided.`

6. Article 7(2) is replaced by the following:

'2. In the case of goods suspected of infringing patents on products, certificates or design rights, the owner, the importer or the consignee of the goods shall be able to have the goods in question released or their detention revoked against provision of a security, provided that:

- the customs service or office referred to in Article 6(1) has been informed, within the time limit referred to in paragraph 1, that the matter has been referred to the authority competent to take a substantive decision referred to in the aforesaid paragraph 1,

- on expiry of the time limit, the authority empowered for this purpose has not imposed interim measures, and

- all the customs formalities have been completed.

The security must be sufficient to protect the interests of the holder of the right. Payment of the security shall be without prejudice to the other remedies open to the holder of the right. Where the matter has been referred to the authority competent to take a substantive decision other than on the initiative of the holder of the patent on a product, certificate or design right, the security shall be released if that person does not exercise his right to institute legal proceedings within 20 working days of the date on which he is notified of the suspension of release or detention. Where the second subparagraph of paragraph 1 applies, this period may be extended to a maximum of 30 working days.`

7. The introductory wording of Article 8(1) is replaced by the following:

'Without prejudice to the other forms of legal recourse open to the right holder, Member States shall adopt the measures necessary to allow the competent authorities.`

8. In Article 9, paragraphs 1 and 2 are replaced by the following:

'1. Save as provided by the law of the Member State in which an application in accordance with Article 3(2) is lodged or, in the case of an application under the second subparagraph of Article 3(1), in which counterfeit or pirated goods escape detection by a customs office, the acceptance of an application shall not entitle the holder of a right to compensation where such goods are not detected by a customs office and are released or no action is taken to detain them in accordance with Article 6(1).

2. Save as provided by the law of the Member State in which the application is made or, in the case of an application under the second subparagraph of Article 3(1), in which loss or damage is incurred, exercise by a customs office or by another duly empowered authority of the powers conferred on them in regard to combating counterfeit or pirated goods shall not render them liable to the persons involved in the operations referred to in Article 1(1)(a) or Article 4, in the event of their suffering loss or damage as a result of their action.`

Article 2

This Regulation shall enter into force on the twentieth day following that of its publication in the Official Journal of the European Communities.

This Regulation shall be binding in its entirety and directly applicable in all Member States.

(1) OJ L 341, 30.12.1994, p. 8.

(2) OJ L 182, 2.7.1992, p. 1.

(3) OJ L 198, 8.8.1996, p. 30.

(4) OJ L 11, 14.1.1994, p. 1.

(5) OJ L 349, 31.12.1994, p. 83.