Council Regulation (EC) No 241/1999 of 25 January 1999 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
Date: 1999-01-25
Institutions: Council of the European Union
Subjects: export restriction, free circulation, industrial counterfeiting, intellectual property, marketing restriction, trade mark

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I

(Acts whose publication is obligatory)

COUNCIL REGULATION (EC) No 241/1999

of 25 January 1999

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

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 (1),

Having regard to the opinion of the European Parlia-
ment (2),

Having regard to the opinion of the Economic and Social
Committee (3),

(1) Whereas, pursuant to Article 15 of Regulation (EC)
No 3295/94 (4), 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;

(2) Whereas the marketing of goods infringing patents
or supplementary protection certificates for medi-
cinal products as provided for in Council Regula-
tion (EEC) No 1768/92 of 18 June 1992
concerning the creation of a supplementary protec-
tion certificate for medicinal products (5) or supple-
mentary 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 (6) 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

(1) OJ C 108, 7. 4. 1998, p. 63.
(2) OJ C 210, 6. 7. 1998, p. 125.
(3) OJ C 284, 14. 9. 1998, p. 3.
(4) OJ L 341, 30. 12. 1994, p. 8.
(5) OJ L 182, 2. 7. 1992, p. 1. Regulation as amended by the

1994 Act of Accession.

(6) OJ L 198, 8. 8. 1996, p. 30.

market and measures should be adopted to that end
to deal effectively with this unlawful activity
without impeding the freedom of legitimate trade;
whereas
also being pursued
through efforts being made along the same lines at
international level;

this objective is

(3) Whereas, in order to guarantee the integrity of the
Community’s external frontier, the customs author-
ities should be permitted to take action against
goods infringing certain intellectual property rights
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 authorised to take action as soon as the said
goods are brought into the Community;

(4) Whereas, as regards suspensive procedures,

free
to
zones and free warehouses, re-export subject
notification and temporary storage,
the customs
authorities will act only where goods suspected to
be goods infringing certain intellectual property
rights are discovered during a check;

(5) Whereas Council Regulation (EC) No 40/94 of 20
December 1993 on the Community trademark (7)
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;

(7) OJ L 11, 14. 1. 1994, p. 1. Regulation as amended by Regula-

tion (EC) No 3288/94 (OJ L 349, 31. 12. 1994, p. 83).

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(6) Whereas to enhance the Community dimension of
the said trade mark the administrative procedure
for obtaining customs protection should be simpli-
fied;

(7) Whereas the holders of such trade marks 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 devel-
opments in the area of electronic data interchange
in administrative procedures must be taken into
consideration, in particular as far as the transmis-
sion of decisions and information is concerned;

(8) 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 shall be 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 shall be replaced by the following:

‘Article 1

1.

This Regulation lays down:

(a) the conditions under which the customs author-
ities shall take action where goods suspected of
being goods referred to in paragraph 2(a) are:

— entered for
re-
free circulation, export or
in accordance with Article 61 of
export,
Council Regulation (EEC) No 2913/92 of 12
October 1992 establishing the Community
Customs Code (*),

— found in the course of checks on goods under
customs supervision within the meaning of
Article 37 of Council Regulation (EEC) No
2913/92, 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;

and

(b) the measures which shall be taken by the
competent authorities with regard to those goods
where it has been established that they are indeed
goods referred to in paragraph 2(a).

2.

For the purposes of this Regulation:

(a) “goods infringing an intellectual property right”

means

— “counterfeit goods”, namely:

— goods,

including the packaging thereof,
bearing without authorisation a trade mark
which is identical to the trade mark validly
registered in respect of the same type of
goods, or which cannot be distinguished in
its essential aspects from such trade mark,
and which thereby infringes the rights of
the holder of the trade mark in question
under Community law or the law of the
Member State where the application for
action by the customs authorities is made,

— any trade mark symbol (logo, label, sticker,
instructions for use, guarantee
brochure,
document) whether presented separately or
not,
in the same circumstances as the
goods referred to in the first indent,

— packaging materials bearing the trade
marks of counterfeit goods, presented
separately in the same circumstances as
the goods referred to in the first indent;

— “pirated goods”, namely: goods which are or
embody copies made without the consent of
the holder of the copyright or neighbouring
the holder of a design right,
rights, or of
whether registered under national law or not,
or of a person duly authorised by the holder in
the country of production, where the making
of those copies infringes the right in question
under Community law or
the
Member State in which the application for
action by the customs authorities is made;

the law of

— goods infringing,

in the Member State in
which the application for action by the
customs authorities is made, a patent under
the law of that Member State or a supplemen-
tary protection certificate as provided for by
Council Regulation (EEC) No 1768/92 (**) or
Regulation (EC) No 1610/96 of the European
Parliament and of the Council (***);

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(b) “holder of a right” means the holder of a trade
mark, a patent or a certificate and/or one of the
rights referred to in (a), or any other person
authorised to use that trademark, patent, certifi-
cate and/or right, or a representative thereof;

(c) “Community trademark” means the trademark
defined in Article 1 of Council Regulation (EC)
No 40/94 (****);

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

Any mould or matrix which is

3.
specifically
designed or adapted for the manufacture of a counter-
feit trade mark or of goods bearing such a trade mark,
for the manufacture of goods infringing a patent or a
certificate or for the manufacture of pirated goods
shall be treated as goods referred to in paragraph 2(a),
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.

This Regulation shall not apply to goods which
4.
bear a trade mark with the consent of the holder of
that trade mark or which are protected by a patent or
a certificate, by a copyright or neighbouring right or
by 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 para-
graph 1(a) without the latter’s consent.

It shall similarly not apply to goods referred to in the
first subparagraph which have been manufactured or
bear a trade mark under conditions other than those
agreed with the holder of the rights in question.

(*) OJ L 302, 19. 10. 1992, p. 1.
(**) OJ L 182, 2. 7. 1992, p. 1.
(***) OJ L 198, 8. 8. 1996, p. 30.
(****) OJ L 11, 4. 1. 1994, p. 1.';

3. the title of Chapter II shall be replaced by the

following:

‘Prohibition of the entry, release for free circulation,
export, re-export, placing under a suspensive pro-
cedure, or placing in a free zone or free warehouse, of
goods infringing certain intellectual property rights';

1(2)(a) on completion of the procedure provided for in
Article 6 shall be prohibited.';

5. Article 3 shall be amended as follows:

(a) the following two subparagraphs shall be added to

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.

Where electronic data interchange systems exist,
Member States may provide that the application
for customs action can be made by using a data
processing technique.';

(b) the third subparagraph of paragraph 2 shall be

replaced by the following:

‘By way of indication, in the case of pirated goods
or of goods infringing patents or certificates, that
information shall, wherever possible, include:';

(c) paragraphs 3 and 4 shall be replaced by the

following:

‘3.
Save where the second subparagraph of
the application must
paragraph 1 is applied,
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.

The applicant may be charged a fee to cover
4.
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.';

4. Article 2 shall be replaced by the following:

(d) the following third subparagraph shall be inserted

in paragraph 5:

‘Article 2

The entry into the Community, release for free circu-
lation, export, re-export, placing under a suspensive
procedure or placing in a free zone or free warehouse
of goods found to be goods referred to in Article

‘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';

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(e) in the first

the words
indent of paragraph 6,
‘counterfeit or pirated goods' shall be replaced by
the words ‘goods referred to in Article 1(2)(a)';

(f) the following text shall be added as the last

subparagraph of paragraph 6:

‘Where an application is submitted under the
second subparagraph of paragraph 1, the security
shall be provided in each of the Member States in
which it is required and the decision granting the
application is effective.';

(g) paragraph 7 shall be amended as follows:

the right

The holder of

‘7.
is required to
inform the service referred to in paragraph 1 and,
where appropriate, the service or services referred
to in the second subparagraph of Article 5(2), if
his right should happen no longer to be validly
registered or to have expired.';

(h) the following paragraph 9 shall be added:

execution of
customs authorities of
concerned.

the decision, at

the request of

the
the other Member States

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 taken. The said
decision shall not enter into force in the Member
State or States to which it is addressed until the
submission referred to in the second subparagraph
has been made and, where appropriate, until the fee
referred to in the second subparagraph of Article 3(4)
has been paid and the security referred to in Article
the period of
3(6) has been provided. However,
validity of the said decision may not, in any circum-
stances, exceed the period of one year from the date
of adoption of
the decision granting the original
application.

The said decision shall then be forwarded imme-
diately to the national customs offices liable to be
concerned with the alleged counterfeit goods
to
which it relates.

‘9.
Paragraphs 1 to 8 shall apply mutatis
mutandis to the extension of the decision on the
original application.';

This paragraph shall apply mutatis mutandis to any
decision to extend the original decision.';

6. in Article 4, the words ‘counterfeit or pirated goods'
shall be replaced by the words ‘goods referred to in
Article 1(2)(a)';

8. in the first subparagraph of Article 6(1), the words
‘counterfeit or pirated goods' shall be replaced by the
words ‘goods referred to in Article 1(2)(a)';

7. Article 5 shall be replaced by the following:

9. Article 7(2) shall be 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 goods referred to in Article 1(2)(a).

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.

When the decision granting the said application has
been taken, it shall be up to the applicant to forward
that decision together, where appropriate, with any
other useful information and any translations to the
customs-authority service referred to in the first
subparagraph of Article 3(1) in the Member State or
States where the applicant has requested that action
be taken. However, with the agreement of the appli-
the information and translations may be
cant,
forwarded directly by the customs-authority service
which took the decision. The applicant shall provide
additional information as deemed necessary for the

In the case of goods suspected of infringing
‘2.
patents, certificates or design rights,
the owner,
importer or 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:

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

(b) on expiry of the time limit, the authority empow-
ered for this purpose has not imposed interim
measures; and

(c) all the customs formalities have been completed.

the holder of

The security must be sufficient to protect the inter-
ests 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

the right. Provision of

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initiative of the holder of the patent, 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 para-
graph 1 applies, this period may be extended to a
maximum of 30 working days.';

10. the title of Chapter V shall be replaced by the

following:
‘Provisions applicable to goods found to be goods
infringing an intellectual property right';
11. Article 8 shall be replaced by the following:

‘Article 8
1. 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:
(a) as a general rule, and in accordance with the
relevant provisions of national
to destroy
goods found to be goods referred to in Article
1(2)(a), or dispose of them outside the channels of
commerce in such a way as to preclude injury to
the holder of the right, without compensation of
any sort and without cost to the Exchequer;
(b) to take, in respect of such goods, any other meas-
ures having the effect of effectively depriving the
persons concerned of the economic benefits of
the transaction.

law,

Save in exceptional cases, simply removing the trade-
marks which have been affixed to the counterfeit
goods without authorisation shall not be regarded as
having such effect.
2.
The goods referred to in Article 1(2)(a) may be
handed over to the Exchequer. In that case, paragraph
1(a) shall apply.
3.
In addition to the information given pursuant to
the second subparagraph of Article 6(1) and under the
conditions laid down therein, the customs office or
the competent service shall inform the holder of the

right, upon request, of the names and addresses of the
consignor, of the importer or exporter and of the
manufacturer of the goods found to be goods referred
to in Article 1(2)(a) and of the quantity of the goods
in question.';

12. in Article 9, paragraphs 1 and 2 shall be 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), by the
law of the Member State in which goods referred to in
Article 1(2)(a) 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), by the law of the Member State 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 taking measures
against goods referred to in Article 1(2)(a) shall not
render them liable towards 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.';

13. in Article 11, the second sentence shall be replaced

by the following:

‘Such penalties shall be effective and proportionate
and constitute an effective deterrent.'

Article 2

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

This Regulation shall enter into force on 1 July 1999.

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

Done at Brussels, 25 January 1999.

For the Council

The President

J. FISCHER