Corrigendum to the position of the European Parliament adopted at first reading on 25 April 2007 with a view to the adoption of Directive 2007/.../EC of the European Parliament and of the Council on criminal measures aimed at ensuring the enforcement of intellectual property rights
Date: 2007-09-27
Institutions: Committee on Legal Affairs, European Parliament
Subjects: TRIPS, application of EU law, criminal law, industrial counterfeiting, industrial property, intellectual property

28.8.2008

EN

Official Journal of the European Union

C 219 E/331

49.
Recalls that there is a need to incorporate new approaches and innovative instruments into regional
development strategies and stresses the need to provide training in gender mainstreaming methodology and
tools for decision-makers at regional and local levels; calls on the Commission to further develop its guide-
lines for the administrative sector on gender mainstreaming for structural fund purposes;

Thursday 27 September 2007

50 Asks the Commission, with the help of

50.
to
include facts and statistics from acceding and candidate countries in future annual reports on equality
between women and men;

the European Institute for Gender Equality,

Instructs its President to forward this resolution to the Council, the Commission and to the govern-

51.
ments and parliaments of the Member States.

CORRIGENDUM

Corrigendum to the position of the European Parliament adopted at first reading on 25 April 2007
with a view to the adoption of Directive 2007/…/EC of the European Parliament and of the Council
on criminal measures aimed at ensuring the enforcement of intellectual property rights

(Official Journal of the European Union, C 74 E, 20 March 2008)

Parliament's position should read as follows:

Position of the European Parliament adopted at first reading on 25 April 2007 with a view to the
adoption of Directive 2007/…/EC of the European Parliament and of the Council on criminal
measures aimed at ensuring the enforcement of intellectual property rights

(Text with EEA relevance)

THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION,

Having regard to the Treaty establishing the European Community, and in particular Article 95 thereof,

Having regard to the proposal from the Commission,

Having regard to the opinion of the European Economic and Social Committee (1),

Having regard to the opinion of the Committee of the Regions (1),

Acting in accordance with the procedure laid down in Article 251 of the Treaty (2),

Whereas:

(1)

The Green Paper on the fight against counterfeiting and piracy in the Single Market presented by the
Commission on 15 October 1998 noted that counterfeiting and piracy had grown into an interna-
tional phenomenon with major repercussions at economic and social level and in terms of consumer
protection, especially as regards public health and safety. An action plan was drawn up as part of the
follow-up to the Green Paper and was included in a communication on the same subject from the
Commission to the Council, the European Parliament and the Economic and Social Committee on
30 November 2000.

(2)

In its conclusions, the Brussels European Council of 20 and 21 March 2003 invited the Commission
and the Member States to improve exploitation of intellectual property rights by taking forward
measures against counterfeiting and piracy.

(1) OJ C …
(2) Position of the European Parliament of 25 April 2007.

C 219 E/332

Official Journal of the European Union

EN

28.8.2008

Thursday 27 September 2007

(3)

(4)

(5)

(6)

(7)

At international level, all Member States, as well as the Community itself, as regards matters within
its competence, are bound by the Agreement on Trade-Related Aspects of Intellectual Property (the
‘TRIPS Agreement’), concluded in the framework of the World Trade Organization and approved by
Council Decision 94/800/EC (1). The TRIPS Agreement contains, in particular, provisions on criminal
matters which are common standards applicable at international level, but the disparities between
Member States are still too great, and they do not permit effective combating of intellectual property
offences, particularly the most serious ones. This causes a loss of confidence in the Internal Market in
business circles, with a consequent reduction in investment in innovation and creation.

The Commission also adopted, in November 2004, an Intellectual Property Rights Enforcement Strat-
egy towards third countries.

Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the
enforcement of intellectual property rights (2) lays down measures, procedures and civil and adminis-
trative remedies. A sufficiently dissuasive set of penalties applicable throughout the Community is
needed to make the provisions laid down in that Directive complete. Certain criminal provisions need
to be harmonised so that counterfeiting and piracy in the internal market can be combated effec-
tively. The Community legislature has the power to take the criminal-law measures that are necessary
to guarantee the full effectiveness of the rules it lays down on the protection of intellectual property,
as defined by this Directive, other than patents.

Building on the Commission Communication on a customs response to counterfeiting and piracy
adopted in October 2005, the Council adopted a Resolution on 13 March 2006, in which it underlined
that the Lisbon Strategy objectives ‘can only be achieved through a well-functioning internal market
with adequate measures to encourage investment in the knowledge-based economy’ and recognised ‘the
threat posed by the serious growth in counterfeiting and piracy to the Union's knowledge-based
economy and in particular to health and safety (…)’.

In its resolution of 7 September 2006 on counterfeiting of medicinal products, the European Par-
liament took the view that the European Community should equip itself as a matter of urgency
with the means to combat effectively illicit practices in the area of piracy and the counterfeiting of
medicines.

(8)

The level of sentencing for natural and legal persons who have committed such offences must be
harmonised. In particular, the rules on prison sentences, fines and confiscation must be harmonised.

(9)

In respect of persons accused of committing the offences laid down in this Directive, and in estab-
lishing their intention to infringe the intellectual property right in question, account should be
taken of the extent to which the accused had, in advance of the infringement, substantial grounds
to plead that the intellectual property right in question was invalid.

(10)

Provisions must be laid down to facilitate criminal investigations. The Member States must ensure the
cooperation of the holders of intellectual property rights with the joint investigation teams in
accordance with the arrangements provided for in Council Framework Decision 2002/465/JHA
of 13 June 2002 on joint investigation teams (3). The involvement of the holders of intellectual
property rights concerned should constitute a supporting role that will not interfere with the neu-
trality of the state investigations.

(11)

To facilitate investigations or criminal proceedings concerning intellectual property offences, these
may not be dependent on a report or accusation made by a person subjected to the offence.

(1) OJ L 336, 23.12.1994, p. 1.
(2) OJ L 157, 30.4.2004, p. 45. Corrigendum published in OJ L 195, 2.6.2004, p. 16.
(3) OJ L 162, 20.6.2002, p. 1.

28.8.2008

EN

Official Journal of the European Union

C 219 E/333

Thursday 27 September 2007

(12) The rights enshrined in the Charter of Fundamental Rights of the European Union should be fully
respected when criminal acts and penalties are defined, during investigations and in the course of
judicial proceedings.

(13)

(14)

(15)

(16)

This Directive does not affect specific liability systems such as laid down for Internet service providers
by Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain
legal aspects of information society services, in particular electronic commerce, in the Internal
Market (1) and by Directive 2001/29/EC of the European Parliament and of the Council of
22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the
information society (2).

Since the objective of this Directive cannot be sufficiently achieved by the Member States acting alone
and can therefore be better achieved at Community level, the Community may adopt measures in accor-
dance with the principle of subsidiarity as set out in Article 5 of the Treaty. In accordance with the
principle of proportionality, as set out in that Article, this Directive does not go beyond what is
necessary in order to achieve that objective.

This Directive respects fundamental rights and observes the principles recognised by the Charter of
Fundamental Rights of the European Union. In particular, this Directive seeks to ensure full respect
for intellectual property, in accordance with Article 17(2) of the Charter.

It is necessary to ensure adequate protection of intellectual property rights in the audiovisual
sector, as indicated by Directive 98/84/EC of the European Parliament and of the Council of
20 November 1998 on the legal protection of services based on, or consisting of, conditional
access (3),

HAVE ADOPTED THIS DIRECTIVE:

Article 1

Objective and scope

This Directive lays down the criminal measures necessary to ensure the enforcement of intellectual property
rights, as defined below, in the context of counterfeiting and piracy.

Those measures shall apply to intellectual property rights, other than patents, provided for in Community
legislation.

Industrial property rights under a patent shall be excluded from the provisions of this Directive.

In particular, this Directive does not apply to any infringement of an intellectual property right related
to:
— patent rights, utility models and plant variety rights, including rights derived from supplementary

protection certificates;

— parallel imports of original goods from a third country which have been allowed by the rightholder.

Article 2

Definitions

For the purposes of this Directive:

(a)

‘intellectual property rights’ means one or more of the following rights:
— copyright,
— rights related to copyright,
— the sui generis right of a database maker,
— rights of the creator of the topographies of a semiconductor product,

(1) OJ L 178, 17.7.2000, p. 1.
(2) OJ L 167, 22.6.2001, p. 10.
(3) OJ L 320, 28.11.1998, p. 54.

C 219 E/334

Official Journal of the European Union

EN

28.8.2008

Thursday 27 September 2007

— trademark rights, in so far as extending to them the protection of criminal law is not inimical to

free market rules and research activities,

— design rights,
— geographical indications,
— trade names, in so far as these are protected as exclusive property rights in the national law

concerned,

— and in any event the rights, in so far as provision is made for them at Community level, in
respect of goods within the meaning of Article 2(1)(a) and (b) of Council Regulation (EC)
No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infring-
ing certain intellectual property rights and the measures to be taken against goods found to
have infringed such rights (1), and in any event with the exclusion of patents;

(b) ‘infringements on a commercial scale’ means any infringement of an intellectual property right
committed to obtain a commercial advantage; this excludes acts carried out by private users for
personal and not-for-profit purposes;

(c)

(d)

‘intentional infringements of an intellectual property right’ means any deliberate and conscious
infringement of the right concerned for the purpose of obtaining an economic advantage on a com-
mercial scale;

‘legal person’ means any legal entity having such status under the applicable national law, except for
States or any other public bodies acting in the exercise of their prerogative of public power, as well as
public international organisations.

Article 3

Offences

Member States shall ensure that all intentional infringements of an intellectual property right on a commer-
cial scale, and aiding or abetting and inciting the actual infringement, are treated as criminal offences.

Criminal sanctions shall not be applied in cases of parallel importation of original goods which have
been marketed with the agreement of the right-holder in a country outside the European Union.

Member States shall ensure that the fair use of a protected work, including such use by reproduction in
copies or audio or by any other means, for purposes such as criticism, comment, news reporting, teaching
(including multiple copies for classroom use), scholarship or research, does not constitute a criminal
offence.

Article 4

Nature of penalties

1.

For the offences referred to in Article 3, the Member States shall provide for the following penalties:

(a)

for natural persons: custodial sentences;

(b)

for natural and legal persons:

(i)

criminal fines for natural persons and criminal or non-criminal fines for legal persons;

(ii) confiscation of the object, instruments and products stemming from infringements or of goods

whose value corresponds to those products.

For the offences referred to in Article 3, the Member States shall provide that the following penalties

2.
are also available in appropriate cases:

(a) destruction of the goods, including materials or equipment used for infringing an intellectual property

right;

(b)

total or partial closure, on a permanent or temporary basis, of the establishment used to commit the
offence;

(1) OJ L 196, 2.8.2003, p. 7.

28.8.2008

EN

Official Journal of the European Union

C 219 E/335

Thursday 27 September 2007

(c)

a permanent or temporary ban on engaging in commercial activities;

(d) placing under judicial supervision;

(e)

judicial winding-up;

(f)

a ban on access to public assistance or subsidies;

(g) publication of judicial decisions;

(h) an order requiring the infringer to pay the costs of keeping seized goods.

Article 5

Level of penalties

Each Member State shall take the necessary measures to ensure that, when committed by natural
1.
persons, the offences referred to in Article 3 are punishable by a maximum sentence of at least four years'
imprisonment where they are serious crimes within the meaning of Article 3(5) of Directive 2005/60/EC
of the European Parliament and of the Council of 26 October 2005 on the prevention of the use of the
financial system for the purpose of money laundering and terrorist financing (1) or are committed under
the aegis of a criminal organisation within the meaning of Framework Decision 2007/…/JHA on the fight
against organised crime, or where they carry a health or safety risk.

2. Member States shall take the necessary measures to ensure that, when committed by natural persons
or legal entities, the offences referred to in Article 3 are punishable by effective, proportionate and dissuasive
penalties. These penalties shall include criminal and non-criminal fines:

(a)

to a maximum of at least EUR 100 000 for cases other than those referred to in paragraph 1;

(b) to a maximum of at least EUR 300 000 for cases referred to in paragraph 1.

3. Member States shall take the necessary measures to ensure that repeated offences within the mean-
ing of Article 3 committed by natural and legal persons in a Member State other than their country of
origin or domicile are taken into account when determining the level of penalties in accordance with
paragraphs 1 and 2 of this Article.

Article 6

Extended powers of confiscation

Member States shall take the necessary measures to allow the total or partial confiscation of goods belong-
ing to convicted natural or legal persons in accordance with Article 3 of Council Framework Decision
2005/212/JHA of 24 February 2005 on Confiscation of Crime-Related Proceeds,
Instrumentalities and
Property (2), where the offences are serious crimes within the meaning of Article 3(5) of Directive
2005/60/EC or are committed under the aegis of a criminal organisation within the meaning of Framework
Decision 2007/…/JHA on the fight against organised crime, or where they carry a health or safety risk.

Article 7

Misuse of rights

Member States shall ensure that, through criminal, civil and procedural measures, the misuse of threats
of criminal sanctions is prohibited and made subject to penalties.

Member States shall prohibit procedural misuse, especially where criminal measures are employed for the
enforcement of the requirements of civil law.

(1) OJ L 309, 25.11.2005, p. 15.
(2) OJ L 68, 15.3.2005, p. 49.

C 219 E/336

Official Journal of the European Union

EN

28.8.2008

Thursday 27 September 2007

Article 8

Rights of defendants

Member States shall ensure that the rights of defendants are duly protected and guaranteed.

Article 9

Joint investigation teams

1. Member States must ensure that the holders of intellectual property rights concerned, or their repre-
sentatives, and experts, are allowed to assist the investigations carried out by joint investigation teams into
the offences referred to in Article 3.

2. Member States shall put in place adequate safeguards to ensure that such assistance does not
compromise the rights of the accused person, for example by affecting the accuracy, integrity or imparti-
ality of evidence.

3.
Article 8 of the Charter of Fundamental Rights of the European Union, which concerns the protec-
tion of personal data, and Directive 95/46/EC of the European Parliament and of the Council of
24 October 1995 on the protection of individuals with regard to the processing of personal data and
on the free movement of such data (1), shall be fully respected in the course of investigations and judicial
proceedings.

Article 10

Right to receive information from law enforcement authorities

Member States shall provide that, where law enforcement authorities seize infringing items or obtain
other evidence of infringement, the authorities make such evidence available for use in pending or con-
templated civil proceedings against the alleged infringer brought by the right-holder before a court of
competent jurisdiction within the European Union, and, where practicable, that those authorities inform
the right-holder concerned or his representative that they are in possession of such items or evidence.
Member States may require that any such provision of evidence to the right-holder be made subject to
reasonable access, security or other requirements so as to ensure the integrity of the evidence and to
avoid prejudice to any criminal proceedings that may ensue.

Article 11

Initiation of criminal proceedings

Member States shall ensure that the possibility of initiating investigations into, or prosecution of, offences
covered by Article 3 are not dependent on a report or accusation made by a person subjected to the offence,
at least if the acts were committed in the territory of the Member State.

Article 12

Transposition

1. Member States shall bring into force the provisions necessary to comply with this Directive by … (*) at
the latest. They shall forthwith communicate to the Commission the text of those provisions and a correla-
tion table between those provisions and this Directive.

(1) OJ L 281, 23.11.1995, p. 31. Directive as amended by Regulation (EC) No 1882/2003 (OJ L 284, 31.10.2003,

p. 1).

(*) 18 months after the date of adoption.

28.8.2008

EN

Official Journal of the European Union

C 219 E/337

Thursday 27 September 2007

When Member States adopt these provisions, they shall contain a reference to this Directive or shall be
accompanied by such reference at the time of their official publication. The procedure for such reference
shall be adopted by Member States.

2. Member States shall communicate to the Commission the provisions of national law which they adopt
in the field covered by this Directive.

Article 13

Entry into force

This Directive shall enter into force on the 20th day following its publication in the Official Journal of the
European Union.

Article 14

This Directive is addressed to the Member States.

Done at …, on …

For the European Parliament
The President

For the Council
The President