COMMISSION STAFF WORKING DOCUMENT Analysis of the application of Directive 2004/48/EC of the European Parliament and the Council of 29 April 2004 on the enforcement of intellectual property rights in the Member States   Accompanying document to the   Report from the Commission to the Council, the European Parliament and the European Social Committee on the application of Directive 2004/48/EC of the European Parliament and the Council of 29 April 2004 on the enforcement of intellectual property rights  COM(2010) 779 final
Date: 2010-12-22
Institutions: European Commission
Subjects: TRIPS, approximation of laws, industrial property, intellectual property

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EUROPEAN COMMISSION 

Brussels, 22.12.2010 
SEC(2010) 1589 final 

COMMISSION STAFF WORKING DOCUMENT 

Analysis of the application of Directive 2004/48/EC 
of the European Parliament and the Council of 29 April 2004 
on the enforcement of intellectual property rights in the Member States 

Accompanying document to the 

Report from the Commission to the Council, the European Parliament and the 
European Social Committee on the application of Directive 2004/48/EC 
of the European Parliament and the Council of 29 April 2004 
on the enforcement of intellectual property rights 

COM(2010) 779 final 

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TABLE OF CONTENTS 

1. 

2. 

2.1. 

2.2. 

2.3. 

Introduction and General remarks................................................................................ 4 

The transposition of the Directive by the Member States and its application in 
practice ......................................................................................................................... 4 

Subject Matter and Scope of Application (Articles 1 and 2) ....................................... 5 

General provisions (Articles 3 to 5) ............................................................................. 6 

Gathering of Evidence and Measures to Preserve Evidence (Articles 6 and 7)........... 7 

2.3.1.  Evidence gathering and preservation for all infringements of intellectual property 

rights............................................................................................................................. 7 

2.3.2.  Evidence gathering in the case of infringements committed on a commercial scale... 9 

2.3.3.  Evidence and protection of confidential information................................................. 10 

2.4. 

Right of Information (Article 8)................................................................................. 10 

2.4.1.  The impact of the right of information on the legislation and the jurisprudence in the 
Member States............................................................................................................ 11 

2.4.2.  Conflicts between the right of information and the right to privacy.......................... 12 

2.5. 

Injunctive relief (Articles 9 and 11) ........................................................................... 13 

2.5.1. 

Interlocutory injunctions (Article 9) .......................................................................... 13 

2.5.1.1.  General issues............................................................................................................. 13 

2.5.1.2.  Injunctions against intermediaries.............................................................................. 14 

2.5.2.  Permanent injunctions (Article 11) ............................................................................ 16 

2.5.3.  Scope of the injunctions ............................................................................................. 17 

2.5.4.  Cross-border injunctions ............................................................................................ 17 

2.6. 

Corrective and Alternative Measures (Articles 10 and 12)........................................ 19 

2.6.1.  Meaning and purpose of "recall and definitive removal of infringing goods from the 

channels of commerce" .............................................................................................. 19 

2.6.2.  Destruction of the goods as a preferred corrective measure ...................................... 20 

2.6.3.  Secondary use of the goods infringing intellectual property rights ........................... 20 

2.6.4.  Alternative measures.................................................................................................. 20 

2.7. 

Damages and legal costs (Articles 13 and 14) ........................................................... 21 

2.7.1.  Calculation of damages .............................................................................................. 21 

2.7.2.  Wilful and negligent infringements and infringements committed in good faith...... 22 

2.7.3.  Damages appropriate to the actual prejudice suffered by the rightholder ................. 22 

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2.7.3.1.  Rightholders' lost profits ............................................................................................ 22 

2.7.3.2.  Infringers' profits........................................................................................................ 22 

2.7.3.3.  Moral damages and damages for negative economic consequences ......................... 23 

2.7.4.  Lump sum damages.................................................................................................... 23 

2.7.5.  More far-reaching national rules................................................................................ 24 

2.7.6.  Legal costs and other expenses .................................................................................. 24 

2.8. 

Codes of Conduct....................................................................................................... 24 

3. 

4. 

Absence of harmonized protection of intellectual property rights through criminal 
law .............................................................................................................................. 25 

Conclusion.................................................................................................................. 26 

Annex 1: The transposition of the Directive by the Member States and Member States' 
application reports .................................................................................................................... 27 

1. 

2. 

Transposition process................................................................................................. 27 

Implementation Reports ............................................................................................. 27 

Annex 2: Methodology for the Analysis .................................................................................. 29 

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1. 

INTRODUCTION AND GENERAL REMARKS 

Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the 
enforcement of intellectual property rights1 (hereinafter referred to as the "Directive") was to 
be transposed by 29 April 2006. Article 18 of the Directive requires Member States to submit 
to the Commission a report on the implementation of the Directive three years after that date. 

The  Commission  Report  on  the  application  of  Directive  2004/48/EC  of  the  European 
Parliament  and  the  Council  of  29  April  2004  on  the  enforcement  of  intellectual  property 
rights, which is complemented by this Staff Working Document, is provided in application of 
Article 18 of the Directive. The report shall include an assessment of the effectiveness of the 
measures taken, as well as an evaluation of its impact on innovation and the development of 
the information society. 

The Report is based on the reports received from the Member States according to Article 18 
of  the  Directive  but  also  on  the  Commission's  own  assessment  of  the  situation  and  on 
feedback received from stakeholders and legal practitioners. 

Due to the late transposition of the Directive in many Member States and the fact that some 
Member State did not provide the application report provided for in the Directive2 or provided 
only some information of a very general nature, the information available on the impact of the 
Directive  is  too  limited  to  allow  for  a  full  assessment  of  its  effectiveness  at  this  stage  (see 
Annex 3 for further detail on the methodology of this report). However, in the context of the 
European Observatory on Counterfeiting and Piracy, DG Internal Market and Services works 
with experts from the private sector to assess the application of the Directive and to complete 
the information received from the Member States. Although this work is still continuing, the 
information received so far allows already identifying a certain number of issues related to the 
Directive that deserve attention. 

This  paper  (1)  chronologically  describes  the  transposition  of  the  different  articles  of  the 
Directive by the Member States and their application in practice, problems which have arisen 
in  the  interpretation  of  some  provisions  but  also  sets  out  other  issues  that  currently  are  not 
explicitly  covered  by  the  Directive  but  have  proved  to  be  of  importance  for  an  effective 
enforcement of intellectual property rights, and (2) draws a number of conclusions as to the 
issues that could be addressed in the context of a possible review of the Directive. 

2. 

THE  TRANSPOSITION  OF  THE  DIRECTIVE  BY  THE  MEMBER  STATES  AND  ITS

APPLICATION IN PRACTICE 

The Directive's provisions (only) relate to civil law measures to enforce intellectual property 
rights.  They  encompass,  in  particular,  evidence-gathering  powers  for  judicial  authorities, 
powers  to  force  offenders  and  any  other  party  commercially  involved  in  an  infringement  to 
provide  information  on  the  origin  of  the  infringing  goods  and  of  the  distribution  networks, 
provisional  and  precautionary  measures  such  as  interlocutory  injunctions  or  seizures  of 
suspect  goods,  corrective  measures  including  permanent  injunctions,  recall  and  definitive 

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OJ L 157, 30.04.2004, p. 16. 
For details on the transposition process and the reports received from the Member States see Annex 1. 

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removal of the infringing goods from channels of commerce, powers to force offenders to pay 
damages and measures related to the publication of judicial decisions. 

2.1. 

Subject Matter and Scope of Application (Articles 1 and 2) 

The Directive covers all infringements of intellectual property rights3 without containing any 
definition of intellectual property rights. The scope is not limited to those rights harmonized 
at EU level, but also covers rights protected as intellectual property rights by national law.  

This  technique  used  by  the  Directive  has  the  advantage  of  providing  a  high  degree  of 
flexibility  as  the  Directive's  scope  adapts  to  changing  definitions  of  intellectual  property 
rights, both at EU and at national level. However, several questions remain open. Thus, some 
uncertainties  have  arisen  as  to  whether  domain  names,  trade  (business)  secrets,  including 
know-how, are covered by the Directive, and whether the Directive is applicable to other acts 
of unfair competition (for example parasitic copying). The status and the form of protection 
of  trade  (business)  secrets,  including  know-how,  and  the  treatment  of  acts  of  unfair 
competition and of domain names is very different among Member States. It seems to derive 
from  the  wording  of  the  Directive  that  in  cases  where  they  are  protected  as  an  intellectual 
property right at national level, they should be understood as being covered by the scope of 
the Directive. However, in view of the diverging interpretations in the Member States it could 
be important to provide some clarification in that respect. 

Article  2(1)  of  the  Directive  states  that  Member  States  may  provide  for  sanctions  and 
remedies that are more favourable to rightholders. The Directive therefore provides only for 
minimum  harmonisation  as  far  as  enforcement  measures  are  concerned.  Some  Member 
States  have  gone  beyond  the  Directive's  provisions  and  have  introduced  stricter  measures. 
From the Commission's observations as well as from the stakeholders' consultation it however 
appears, that this was only the case for a few provisions in the Directive. One of the examples 
where  some  Member  States  have  gone  beyond  the  Directive's  wording  was  the  right  of 
information  (Article  8)  which,  according  to  the  Directive,  is  limited  to  the  activities  carried 
out  on  a  commercial  scale  if  the request  is  not  directed  towards  the  infringer.  A  significant 
number  of  Member  States  (e.g.  Denmark,  Estonia,  Greece,  France,  Lithuania,  Slovak 
Republic)  have  gone  beyond  the  ‘commercial  scale’  requirement  (of  which  there  is  no 
definition in the Directive) and introduced this measure for all infringements (for more details 
see section 2.3.2). Another example where Member States have gone beyond the Directive's 
provisions  was  damages.  As  far  as  damages  are  concerned,  most  Member  States  did  not 
specifically implement the Directive's provisions as they felt that their national laws already 
covered  them  sufficiently.  However,  as  far  as  lump  sum  damages  are  concerned,  some 
Member States (e.g. Austria, Belgium, Greece, Czech Republic, Lithuania, Poland, Romania, 
Slovenia)  have  moved  beyond  the  Directive's  provisions  and  introduced  multiple  damages 
awards. Such multiple (mostly double) awards are available for copyright (and rights related 
to copyright) infringements or for infringements committed in bad faith. 

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In  this  paper,  the  term  ‘intellectual  property  rights’  is  deemed  to  cover  all  rights  set  out  in  the 
"Statement  by  the  Commission  concerning  Article  2  of  Directive  2004/48/EC  of  the  European 
Parliament  and  of  the  Council  on  the  enforcement  of  intellectual  property  rights  (2005/295/EC)",  OJ 
L94,  13.04.2005,  p.  37.  These  include  copyright,  rights  related  to  copyright,  sui  generis  right  of  a 
database maker, rights of the creator of the topographies of a semiconductor product, trademark rights, 
design  rights,  patent  rights  (including  rights  derived  from  supplementary  protection  certificates), 
geographical indications, utility model rights, plant variety rights and trade names, in so far as they are 
protected as exclusive property rights under the national law concerned.  

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At the same time, several voluntary provisions of the Directive have not been implemented by 
the Member States. It has been observed that these cases are more numerous than those where 
Member  States  provided  for  stricter  measures.  As  an  example,  many  Member  States  have 
opted  for  non-transposition  of  the  alternative  measures  provided  for  in  Article  12  of  the 
Directive  (e.g.  Austria,  Belgium,  France,  Luxembourg,  the  Netherlands,  and  Slovenia). 
Likewise, many Member States (e.g. Czech Republic, Greece, Hungary, Malta, and Poland.) 
have  opted  for  non-implementation  of  description  orders  (Article  7(1)),  which  are  often 
available in criminal proceedings only. 

2.2. 

General provisions (Articles 3 to 5) 

As  a  procedural  law,  the  Directive  shall  not  affect  substantive  law  on  intellectual  property, 
Member States' international obligations (notably the TRIPS Agreement4) including Member 
States provisions on criminal law. 

Article  3  introduces  the  general  principle  that  Member  States  shall  provide  for  fair  and 
equitable  measures,  procedures  and  remedies  to  ensure  the  enforcement  of  the  intellectual 
property rights covered by this Directive. These measures, procedures and remedies shall also 
be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid 
the creation of barriers to legitimate trade and to provide for safeguards against their abuse. 

Articles  4  deals  with  the  persons  entitled  to  have  access  to  courts  in  order  to  seek 
application  of  the  measures,  procedures  and  remedies  laid  down  in  the  Directive.  This 
group  not  only  includes  the  right  holders  but  also  all  other  persons  authorised  to  use  those 
rights, especially licensees, as well as collective rights management bodies and professional 
defence bodies. While the former had already been protected by Member States' laws before 
the  Directive  was  adopted,  a  majority  of  Member  States  had  to  amend  their  legislation  to 
include professional associations established for the protection of intellectual property rights. 

Article 5 governs the presumption of authorship or ownership. This provision is based on 
the  wording  of  Article  15  of  the  Berne  Convention5  and,  in  addition,  extends  it  also  to  the 
owners of related rights. Requiring detailed and complex proof of copyright in the past often 
caused substantial delays or proceedings and lead to inefficient judicial proceedings. Article 5 
therefore introduced a mechanism providing that, in the absence of proof to the contrary, it is 
sufficient for the name of the author to appear on the work "in the usual manner", which is 
also  applicable  to  the  holders  of  rights  related  to  copyright  with  regard  to  their  protected 
subject matter. 

This  tool  turned  out  to  be  particularly  helpful  for  the  various  rightholders  to  fight  against 
infringers'  attempts  to  delay  artificially  the  proceedings,  in  some  cases  without  appropriate 
evidence,  by  denying  the  ownership  of  copyright  holders.  It  allowed  namely  phonogram 
producers  to  initiate  court  proceedings  on  behalf  of  various  right  holders  more  easily. 
Furthermore,  some  rightholders  reported  that  the  presumption  has  made  it  easier  to  obtain 
cease-and-desist declarations from infringers, and has therefore had the effect of reducing the 
number of court proceedings.  A  majority of Member  States had  to adapt their legislation to 

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Agreement  on  Trade-Related  Aspects  of  Intellectual  Property  Rights  (TRIPS  Agreement)  of  1994; 
Council  Decision  (of  22  December  1994)  concerning  the  conclusion  on  behalf  of  the  European 
Community, as regards matters within its competence, of the agreements reached in the Uruguay Round 
multilateral negotiations (1986-1994) (94/800/EC), OJ L 336, p.1.  
Berne Protection for the Protection of Literary and Artistic Works of 9 September 1886. 

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this provision, in particular by stating that the name appearing on the work shall be admissible 
as proof of the holder of the right. 

2.3. 

Gathering of Evidence and Measures to Preserve Evidence (Articles 6 and 7) 

Articles  6  and  7  of  the  Directive  set  out  a  number  of  obligations  on  Member  States  with 
regard to gathering of evidence and measures to preserve evidence. The aim of these measures 
is to produce evidence of the infringement to courts, even where it is not in the possession of 
the right holder. This evidence includes information on the infringing products, on the means 
of production, the extent of the infringement etc., i.e. all the information that is indispensable 
for establishing an infringement of an intellectual property right. 

2.3.1.  Evidence  gathering  and  preservation  for  all  infringements  of  intellectual  property 

rights 

Article  6(1)  lies  down  that  if  the  rightholder  has  presented  reasonably  accessible  evidence 
sufficient  to  support  his  claims  and  has,  in  substantiating  those  claims,  specified  evidence 
which lies in the control of the opposing party, the competent judicial authority may order that 
the opposing party produce evidence under its control. This provision was partly inspired by 
Article  43  of  the  TRIPS  Agreement  but  in  addition  enables  Member  States  to  provide  that 
courts  may  consider  a  sample  of  copies  to  constitute  sufficient  evidence  for  the  entire 
infringement  (so  called  'sampling').  It  has  to  be  noted  that  sampling  was  already  known  in 
some Member States before the adoption of the Directive6 but was a novel provision in a large 
majority of Member States.7 In a large number of Member States, stakeholders acknowledged 
that the possibility of using sampling led to an improvement in enforcing intellectual property 
rights, especially for the protection of copyright.8  

Article  7  requires  that  the  Member  States  shall,  even  before  the  commencement  of 
proceedings  on  the  merits  of  the  case,  order  prompt  and  effective  provisional  measures  to 
preserve  relevant  evidence,  subject  to  the  protection  of  confidential  information.  Such 
measures  may  include  the  detailed  description  (search),  with  or  without  the  taking  of 
samples, the physical seizure of the infringing goods and, in appropriate cases, of materials 
and implements used in the production and/or distribution of these goods and the documents 
relating  thereto.  Where  necessary,  these  measures  shall  be  taken  without  the  other  party 
having  been  heard.  They  shall  be  revoked  or  cease  to  have  effect  if  the  applicant  does  not 
initiate, within a period  specified  by the Directive, proceedings leading to a decision on the 
merits  of  the  case  before  the  competent  judicial  authority.  In  that  case  or  where  the 
infringement of the intellectual property right was not established in the judicial proceeding, 
the  judicial  authorities  shall  have  the  power  to  order  the  applicant  to  provide  the  defendant 
with an appropriate compensation for any injury caused by those measures.  

As far as Articles 6 and 7 are concerned, the Directive goes beyond the TRIPS agreement but 
it also follows a Member States' best practice approach in the sense that it was inspired by 
those  national  provisions  which  proved  to  be  effective  for  the  enforcement  of  intellectual 
property rights. For example, Article 6(2) was based on the so-called 'Mareva injunction'9 in 

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E.g. France, Hungary. 
The possibility of using sampling was introduced in Germany for instance only in 2008. 
Such feedback was received e.g. from stakeholders from Cyprus, Germany, Italy, Lithuania; Poland (for 
trademarks), Romania. 
Mareva Compania Naviera SA v International Bulkcarriers SA [1975] 2 Lloyd's Rep 509. 

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the  UK  and  in  Ireland.  Similarly,  Article  7  was  largely  inspired  by  the  practices  in  some 
Member States such as the UK ('Anton Pillar order')10 or France ('saisie-contrefaçon')11. 

In a number of Members States, the Directive’s rules on the presentation and preservation of 
evidence have lead to important changes in their national legislation.12  

Many Member States have, however, not made use of the options provided for by Article 7 of 
the Directive. One example are description (search) orders (Article 7 (1)) since this measure 
is  more  common  in  the  context  of  criminal  proceedings  than  for  civil  ones.  Likewise,  the 
protection  of  witnesses'  identity  (Article 7(5))  in  Member  States  is  often  used  rather  in 
criminal than in civil proceedings. For some other Member States, this type of measure was 
already part of the general procedural laws and was therefore not transposed specifically with 
a view to proceedings on infringements of intellectual property rights. As far as 'sampling' is 
concerned,  it  appears  from  information  provided  by  stakeholders  that,  despite  it  being  a 
voluntary provision, it has been implemented in a vast majority of Member States.  

In practice, problems concerning evidence gathering and preservation have been observed in a 
number  of  areas.  Thus,  stakeholders  and  in  particular  legal  practitioners  report  that  cross-
border collection of evidence in the context of judicial proceedings remains difficult. There 
are different ways to improve the collection of evidence across borders. A first way could be 
to  improve  the  rules  on  jurisdiction  of  the  courts  to  issue  provisional,  including  protective 
measures,  so  as  to  ensure  that  they  cover  protective  orders  aiming  at  obtaining  information 
and  evidence  as  referred  to  in  Articles  6  and  7  of  the  Directive.  Another  way  could  be  to 
ensure  that  when  a  court  is  faced  with  a  measure  granted  by  a  foreign  court  which  is  not 
known in its own State, it shall, to the extent possible, adapt the measure to one known under 
its  own  law.  Finally,  it  could  be  very  useful  to  improve  the  free  circulation  of  measures 
ordered  ex  parte  within  the  European  Union.  Necessary  steps  in  this  regard  are  being 
undertaken in the context of the upcoming revision of Council Regulation (EC) No 44/2001 
on  jurisdiction  and  the  recognition  and  enforcement  of  judgments  in  civil  and  commercial 
matters (Brussels I Regulation). 

Gathering evidence in relation to the infringements committed via the Internet is becoming 
another significant problem. The relative anonymity of the Internet makes it often difficult to 
pursue the infringers. Infringers (such as sellers or owners of the websites selling/facilitating 
the sale of  the  infringing items)  cannot be properly  identified. Evidence in a  digital form is 
hard  to  preserve  and  images  reflecting  the  content  of  a  webpage  at  a  certain  moment  (so-
called 'screenshots') are often not accepted by the courts as sufficient evidence. This has led 
several  Member  States  to  concluding,  in  their  reports  addressed  to  the  Commission,  that 
greater attention needs to be given to the infringements of intellectual property rights on the 
Internet and that the Directive does not sufficiently address this constantly growing, serious 
problem. 

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Anton Piller KG v Manufacturing Processes Limited [1975] EWCA Civ 12). In Ireland, the so-called 
Anton Pillar Order was formalised by law.  
In France and in Belgium, before the transposition of Directive the well known procedure called "saisie-
contrefaçon" was only available for the certain intellectual property rights such as patents, trademarks 
and designs. This procedure is now available for all intellectual property rights, including geographical 
indications. 
E.g. Estonia, Lithuania and Slovenia. 

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Another measure which is not uniformly applied in the Member States relates to Article 6(1) 
according to which "if the rightholder has presented reasonably accessible evidence sufficient 
to support his claims and has, in substantiating those claims, specified evidence which lies in 
the control of the opposing party the competent judicial authority may order that the opposing 
party produce evidence under its control". This provision is interpreted restrictively in some 
Member  States13,  and  rightholders  who  ask  for  evidence  which  lies  in  the  control  of  the 
opposing  party,  are  frequently  requested  to  specify  the  exact  character,  location,  reference 
numbers and contents of the requested documents, sometimes even the page numbers of the 
defendant's commercial records. Where rightholders are not able to provide this information 
the  requests  are  rejected  by  the  courts  as  'vague'.  Stakeholders  reported  about  a  similar 
situation  in  relation  to  the  right  of  information  (Article  8).  This  practice  of  some  courts 
reduces the effectiveness of Article 6 of the Directive to a considerable extent. Another issue 
which has arisen is how broad the term "control" should be interpreted; whether the disclosure 
obligation  requires  the  person  to  disclose  only  evidence  in  its  possession,  whether  this 
obligation  extends  to  all  information  under  its  control  (a  term  which  is  broader  than 
'possession') and/or whether the person is even required to undertake a reasonable search for 
evidence. The practices of the courts vary in this respect but the majority of the courts seem to 
limit the extent of the disclosure to the items in the possession of the person(s) who is (are) 
required  to  disclose.  It  could  be  useful  to  give  more  concrete  guidance  as  to  how  the  term 
'control' should be interpreted. 

2.3.2.  Evidence gathering in the case of infringements committed on a commercial scale 

Under Article 6(2), Member States' judicial authorities shall have the possibility to order the 
communication  of  banking,  financial  or  commercial  documents  which  are  under  the 
control  of  the  opposing  party,  in  case  of  an  infringement  committed  on  a  commercial 
scale14,  subject  to  the  protection  of  confidential  information.  This  is  a  provision  that  goes 
beyond TRIPS, which does not contain any provision on this subject. 
The Directive, however, does not contain a definition of the term 'commercial scale'.15 Several 
Member  States  transposed  this  article  without  adding  any  legal  definition  of  the  term 
'commercial  scale',  which  is  therefore  left  to  the  interpretation  by  the  courts.16  Only  in  few 
Member States the law provides for a definition of this term.17 The definition is often given by 
using  the  notion  of  "commercial  purpose"  and  defining  it  as  "purposes  aimed  at  direct  or 
indirect  economic  or  commercial  gain"  or  similar.18  These  definitions  are  probably  directly 
inspired by Recital 14 of the Directive according to which "acts carried out on a commercial 
scale  are  those  carried  out  for  direct  or  indirect  economic  or  commercial  advantage;  this 
would  normally  exclude  acts  carried  out  by  end  consumers  acting  in  good  faith".  Other 
Member  States  have  decided  not  to  limit  these  measures  to  cases  of  commercial  scale  and 

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E.g. Greece. 
Also Articles 8(1) - right of information (in case the request is not directed towards the infringer) - and 
9(2)  -  seizure of  the  movable  and  immovable  property,  including  the  blocking of  the infringer's  bank 
account and other assets - are limited to the case of infringements committed on a commercial scale. 
Recital  14 of  the Directive however  states that  that  acts  carried  out on  a  commercial  scale  are  "those 
carried  out  for  direct  or  indirect  economic  or  commercial  advantage  and  that  this  would  normally 
exclude acts carried out by end-consumers acting in good faith". 
E.g. Cyprus, Estonia, Hungary. 
E.g.  Germany,  Czech  Republic,  Romania,  Slovenia.  Italian  scholars  seem  to  conclude  that  "on  a 
commercial scale" means "in the course of trade".  
Different e.g. Germany for copyright infringements ("number or severity of infringements"). 

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allow communication of banking, financial or commercial documents for all infringements of 
intellectual property rights.19 

2.3.3.  Evidence and protection of confidential information 

According to Article 6(1), Member States shall ensure that, on application by a party which 
has presented reasonably available evidence sufficient to support its claims, and has specified 
evidence  which  lies  in  the  control  of  the  opposing  party,  the  competent  judicial  authorities 
may order that such evidence be presented by the opposing party, subject to the protection 
of  confidential  information.  Also,  in  case  an  infringement  is  committed  on  a  commercial 
scale, competent judicial authorities shall be in a position to order communication of banking, 
financial and commercial documents which are under control of the opposing party, with the 
exception  of  confidential  information  (Article  6(2)).  Likewise,  when  ordering  provisional 
measures,  such  as  description,  seizure  or  an  injunction,  due  regard  must  be  given  to  the 
protection  of  confidential  information  (Article  7(1)).  Also  the  right  of  information  shall  be 
"without  prejudice"  to  the  provisions  which  govern  the  protection  of  confidentiality  of 
information  sources  or  the  processing  of  personal  data  (Article  8(3)(e)).  It  appears  that 
Member  States  have  not  specifically  transposed  provisions  related  to  the  protection  of 
confidential information claiming that their previous laws contained  sufficient safeguards to 
protect confidential information. 
This  restriction  has  shown  to  be  particularly  relevant  when  commercial  (trade)  secrets  or 
know-how are at stake. The burden of proof usually lies with the plaintiff but some evidence 
needed  to  establish  the  infringement  or  its  scale  is  controlled  exclusively  by  the  (alleged) 
infringer. In such cases it appears that the courts often find it difficult to assess and balance 
the  rightholder's  interest  in  the  information  and  the  alleged  infringer's  interest  in  protecting 
confidential information in order to prevent abuse, in particular when the parties at stake are 
competitors.  Member  States'  practice,  on  the  one  hand,  shows  that  the  protection  of 
confidential information does not mean that access to confidential information cannot be part 
of  provisional  measures.  On  the  other  hand,  access  to  the  confidential  information  through 
provisional  measures  (by  a  search,  seizure  or  an  injunction)  appears  to  be  allowed  only  in 
cases where this information is truly necessary and where this information cannot be obtained 
by way of other (legal) means. Furthermore, a special procedure (e.g. hearing closed for the 
public)  is  usually  applied  when  such  confidential  information  is  to  be  disclosed  including 
limitation to use this information only for the purposes of the proceedings. On the basis of the 
currently  available  information,  the  Commission  is  not  in  a  position  to  judge  whether  this 
situation  presents  an  obstacle  to  an  effective  enforcement  of  intellectual  property  rights. 
Therefore,  more  information  on  this  matter  including  clarification  of  the  conditions  as  to 
when  and  how,  according  to  the  jurisprudence  of  the  national  courts,  such  confidential 
information may be disclosed would appear to be useful. 

2.4. 

Right of Information (Article 8) 

Article 8 of the Directive requires Member States to enable the competent judicial authorities 
to  order  that  information  be  provided  by  the  infringer  or  another  person  on  the  origin  and 
distribution networks of the goods which infringe intellectual property rights. The scope of 
the group of persons that can be forced to provide the information goes beyond the infringer. 
It is extended to any other person who was found in possession of the infringing goods on a 

19 

For instance, in France, Poland and in Denmark this condition has not been implemented and the access 
to  banking,  financial  or  commercial  documents  is  left  to  the  appreciation  of  the  court  without  this 
limitation. It has to be noted that in France the non-transposition of this condition is, according to the 
French Parliament, due to the difficulty to define properly the notion of "commercial scale". 

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commercial scale, or was found to be using the infringing services on a commercial scale or 
was found to be providing on a commercial scale services used in infringing activities or was 
indicated  as  being  involved  in  the  production,  manufacture  or  distribution  of  the  goods  or 
provision  of  the  services.  Such  information  may  be  requested  also  from  other  actors  like 
intermediaries, for example Internet service providers, transporters or online market places. 
It  is  important  to  note  that  this  provision,  due  to  its  limitation  to  activities  carried  out  on  a 
commercial scale, does not apply to consumers. 

The information shall comprise, firstly, the persons involved in the infringing activities. In 
this context, it is essential not only to identify the persons at the end of the distribution chain, 
but  also  to  detect  those  who  are  "behind  the  scenes",  often  as  part  of  complex  distribution 
networks.  Secondly,  the  provision  allows  gathering  information  about  the  quantities 
produced including the price obtained. This article substantially supplements Article 47 of 
the  TRIPS  Agreement,  which  gives  the  TRIPS  members  only  an  option  to  provide  that  the 
judicial  authorities  are  competent  to  order  the  infringer  to  inform  the  right  holder  of  the 
identity of third persons involved in the production and distribution of the infringing goods or 
services and of their channels of distribution.  

2.4.1.  The impact of the right of information on the legislation and the jurisprudence in the 

Member States 

In some Member States the right of information towards the alleged infringer already existed 
before  the  adoption  of  the  Directive.20  However,  the  right  to  obtain  information  from  third 
parties not directly involved in the proceedings seems to have been a novel in most Member 
States.  Some  Member  States  provide  for  the  right  of  information  only  in  the  context  of 
judicial proceedings, as foreseen by the Directive, other Member States have gone beyond the 
Directive  and  provide  for  a  right  of  information  even  before  the  formal  proceedings,  as  a 
provisional measure. Some Member States seem to provide for the right of information only 
in cases of infringements committed on a commercial scale. The other Member States have 
moved beyond the Directive and provide for the right of information for all infringements. At 
least in one of these Member States, this solution was chosen because the legislator wanted to 
avoid the problems related to the interpretation of the commercial scale criterion21. In some 
Member  States22  (it  appears  that  when  the  information  request  is  directed  towards  a  third 
party,  the  commercial  scale  requirement  is  applied  but  such  requirement  is  not  imposed  in 
case the information is requested from the alleged infringer.  

After  the  transposition  of  the  Directive,  national  courts  have  seen  a  significant  increase  in 
requests  for  information.  Member  States  and  stakeholders  seem  to  agree  that  this  provision 
has improved the ability to trace infringers considerably and has facilitated a better knowledge 
of the infringers23. Furthermore, this provision has had a significant impact on the possibilities 
to  establish  the  "exact  quantities  of  infringing  products  involved"  and  therefore  on  the 
accuracy  of  the  calculation  of  damages.  At  the  same  time  it  appears  that  some  rightholders 
find it difficult to establish that the infringer has acted on a commercial scale without having 
obtained information from the Internet service provider, in particular on different IP addresses 

20 

21 
22 
23 

This was the e.g. case in the UK where, in addition to Mareva injunction and the Anton Pillar Order, the 
so-called "Norwich Pharmacal order" was in place. 
In France. 
E.g. Belgium, Germany, Hungary, Luxemburg, Poland. 
E.g. Sweden. 

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used by the same infringer. In general, many requests for information from third parties seem 
to be directed towards Internet service providers.  

2.4.2.  Conflicts between the right of information and the right to privacy 

The  right  of  information  has  become  an  important  tool  for  the  rightholders  to  pursue 
infringers, and frequent use of this tool by the rightholders proves this. Also the possibility of 
intermediaries to share the data with the rightholders would be an important element in this 
context. In certain areas, it however appears, that the right of information by the right holders 
is  limited  because  of  the  national  provisions  on  the  protection  of  personal  data.  In  some 
Member States (e.g. Spain, Austria) it seems that the disclosure of the relevant information is 
practically impossible in both criminal and civil proceedings.24 This is in particular the case 
for  IPR  infringements  committed  via  the  Internet  such  as  illegal  file-sharing  of  protected 
works through peer-to-peer protocol where Internet services providers may often not be in a 
position to disclose alleged infringers' identities and contact details to rightholders even in the 
context  of  judicial  proceedings  because  of  the  privacy  laws  and  the  protection  of  personal 
data. The situation is even more complicated if the request for information is made before the 
start of judicial proceedings.  

The question that arises is how to strike the balance between the fundamental right to property 
(which includes the protection of intellectual property25) on the one hand and that to privacy26 
on the other. The need to balance the various rights was emphasized by the European Court 
of Justice27 which stated that Community law requires a fair balance to be struck between the 
various  fundamental  rights  protected  by  the  Community  legal  order  and  that  the  authorities 
and  courts  of  the  Member  States  must  not  only  interpret  their  national  law  in  a  manner 
consistent  with  the  directives  but  also  make  sure  that  they  do  not  rely  on  an  interpretation 
which would be in conflict with those fundamental rights or with the other general principles 
of Community law, such as the principle of proportionality.  

In those Member States where privacy laws28 currently prevail over the right to (intellectual) 
property  it  can  be  difficult  for  the  rightholders  to  make  effective  use  of  their  right  of 
information.  However,  the  European  legal  framework  on  the  protection  of  personal 
data/privacy  on  the  one  hand  and  enforcement of  intellectual property rights on the other is 

24 

25 

26 
27 

28 

In Spain, data may only be disclosed for the purposes of prosecution or investigation of serious criminal 
offences (infringement of intellectual property rights do not seem to fall within this category), and any 
extension  would  be  illegal  unless  it  would  be  embedded  in  the  law.  In  Austria,  the  reform  of  the 
criminal procedure removed the possibility to bring a private criminal action ("Privatanklage") without 
knowing the identity of the infringer. The only possibility for rightholders now seems to be to launch a 
civil information claim under copyright law, which is not effective in case of temporary IP addresses. 
Study  on  Online  Copyright  Enforcement  and  Data  Protection  in  Selected  Member  States,  Hunton  & 
Williams, November 2009 available at: http://ec.europa.eu/internal_market/iprenforcement/docs/study-
online-enforcement_en.pdf. 
Article  17(2)  of  the  Charter  of  Fundamental  Rights  of  the  European  Union  states  that  intellectual 
property shall be protected. 
Articles 7 and 8 of the Charter of Fundamental Rights of the European Union.  
Judgment of 29 January 2008 in the case C-275/06 Productores de Música de España (Promusicae) v 
Telefónica de España SAU; judgment of 19 February 2009 in the case C-557/07 LSG-Gesellschaft zur 
Wahrnehmung von Leistungschutzrechten GMBH v Tele2 Telecommunication GMBH. 
In particular laws implementing Directive 95/46/EC on the protection of individuals with regard to the 
processing of personal data and on the free movement of such data, OJ L 281, 23.11.1995, p. 31, and 
Directive 2002/58/EC on the processing of personal data and the protection of privacy in the electronic 
communications sector, OJ L 201, 31.7.2002, p. 37. 

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neutral, in that there is no rule that would imply that the right to privacy should generally take 
precedence over the right to property or vice versa. National laws implementing the various 
directives must therefore be construed in a way allowing a balance to be struck between these 
rights  in  each  case  in  order  to  guarantee  that  the  provision  on  the  right  of  information  can 
protect the rightholders effectively without compromising rights relating to the protection of 
personal  data.  Further  evaluations  could  be  needed  on  the  extent  to  which  Member  States' 
laws and the way they are applied are consistent with these requirements. If necessary, means 
could be considered to remedy the situation and to strike an appropriate balance between the 
rights at stake. 

Another obstacle faced by the rightholders when requesting information appears to be linked 
to  the  retention  of  the  relevant  data  by  intermediaries.  Again,  this  problem  seems  to  be 
most relevant in cases of infringements committed via the Internet. Often the data which are 
requested  (for  example  from  the  Internet  service  providers  or  Internet  platforms)  have  not 
been stored, or by the time the request for information is delivered, the data have already been 
erased.  Currently,  data  retention  is  dealt  with  at  EU  level  only  in  the  Data  Retention 
Directive29 and in the e-privacy Directive30.  

Finally,  the  fact  that  certain  types  of  information  (e.  g.  clinical  data)  may  be  subject  to 
different  confidentiality  regimes  in  different  countries  causes  additional  problems  for 
rightholders.  These  differences  lead  to  uncertainties  as  to  whether  information  legally 
obtained in one  country  may  be  used in another  country where it falls under confidentiality 
rules, and vice versa.  

2.5. 

Injunctive relief (Articles 9 and 11) 

2.5.1. 

Interlocutory injunctions (Article 9) 

2.5.1.1.  General issues 

Article 9 of the Directive obliges Member States to ensure that rightholders are in a position 
to apply for an injunction against the infringer aimed at prohibiting the continuation of the 
infringement ('interlocutory', 'interim' or 'temporary' injunction).31 It appears that injunctions 
against  infringers  were  not  new  to  Member  States'  legal  systems  and  seem  to  have  been 
widely used in the Member States even before the adoption of the Directive. Non-compliance 
with an injunction is sanctioned by a fine to be paid to the plaintiff32 or to the court33 or by 
criminal sanctions in some cases. The reports received from the Member States suggest that 
for  most  of  them  experiences  with  interlocutory  injunctions  have  been  rather  positive.  With 
some exceptions, interlocutory injunctions generally seem to be granted rather quickly by the 
courts and they often lead to a settlement between the parties so that the proceedings on the 

29 

30 

31 

32 
33 

Directive 2006/24/EC on the retention of data generated or processed in connection with the provision 
of  publicly  available  electronic  communications  services  or  of  public  communications  networks  and 
amending Directive 2002/58/EC, OJ L 105, 13.4.2006, p. 54. 
Directive 2002/58/EC of the European Parliament and of the Council of 12 July 2002 concerning the 
processing  of  personal  data  and  the  protection  of  privacy  in  the  electronic  communications  sector 
(Directive on privacy and electronic communications), OJ L 201, 31.7.2002, p. 37. 
This  provision  was  partly  inspired  by  Article  50  of  the  TRIPS  agreement.  However,  an  important 
addition to TRIPS is that such injunctions shall also be available against intermediaries whose services 
are used by a third party to infringe an intellectual property right. 
E.g. the Netherlands. 
Germany, Slovak Republic and the UK. 

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merits  of  the  case  can  be  avoided.  For  most  stakeholders,  due  to  the  length  of  the  judicial 
proceedings  involving  infringements  of  intellectual  property  rights  and  the  costs  of  the 
proceedings  which  are  rarely  reflected  in  the  damages  awarded  in  the  main  proceedings, 
interlocutory injunctions are the main enforcement remedy. 

Despite  this  general  positive  assessment  of  the  interlocutory  injunctions,  the  information  at 
hand suggests that the level of evidence required by the courts to grant an injunction differs 
significantly between Member States and, in general, is rather high. Whereas in cases of an 
infringement of a trade mark, design or copyright the 'obviousness' of the infringement may 
often be assumed, in cases of patent infringements this is rarely the case. Moreover, it appears 
that  some  courts  sometimes  are  reluctant  to  order  an  injunction  unless  an  infringement  has 
actually been proven, as opposed to granting an injunction for preventative reasons. In these 
cases,  the  'sufficient  degree  of  certainty'  that  is  required  by  the  courts  is  higher  than  what 
applicants  are  able  to  establish  in  practise.34  Furthermore,  in  some  cases,  the  accompanying 
costs appear to be rather significant, since such costs often comprise court fees, lawyers’ fees, 
bailiff's fee and in many cases also fees of (technical) experts.35 

2.5.1.2.  Injunctions against intermediaries 

The notion of 'intermediary' is understood broadly by the Directive and includes all persons 
"whose  services  are  used  by  a  third  party  to  infringe  an  intellectual  property  right".  This 
implies  that  even  intermediaries  who  do  not  have  a  direct  contractual  relationship  or 
connection with the infringer may be subject to these measures provided for in the Directive.36 

Nevertheless,  there  are  still  uncertainties  as  to  which  kind  of  intermediaries,  regardless  of 
their  liability,  may  be  subject  to  a  specific  measure  when  contributing  to  or  facilitating  an 
infringement37. 

Intermediaries  who  transport  goods  suspected  of  infringing  intellectual  property  rights  or 
infringing intellectual property rights (such as carriers, freight forwarders, shipping agents or 
postal services) may play an important role in controlling the spreading of counterfeit goods. 

Internet service providers are also key players in the functioning of the online environment. 
They provide, inter alia, access to the Internet and interconnect the underlying networks and 
host websites and servers. Internet service providers, being the intermediaries between all the 
users of the Internet, on the one hand, and the rightholders, on the other, are often placed in a 
compromising position due to the infringing acts of their customers. For this reason, EU law 
already contains specific provisions concerning Internet service providers whose services are 
used  to  infringe  intellectual  property  rights.  Nevertheless,  the  current  EU  legal  framework 
only harmonises certain limitations of liability in relation to Internet service providers where 
certain conditions are satisfied, whilst not affecting the possibility of Member States' courts or 

34 

35 

36 

37 

In Finland, it seems to be rather difficult for the rightholders to convince the courts of the need for an 
interlocutory injunction, except in cases of clear online infringements. 
Stakeholders  indicate  that  such  costs  may  vary  between  EUR  3,500  and  25,000,  and  in  patent 
infringement cases up to EUR 40,000. 
Therefore not only intermediaries used (directly) by the infringer are covered by the Directive, but also 
intermediaries used by a third party to infringe an intellectual property right. 
E.g. in Sweden the notion of 'intermediaries' is limited to "anyone who contributes to the infringement". 

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administrative authorities, in accordance with Member States’ legal systems, to take action in 
individual cases38. 

In  the  area  of  the  sale  of  counterfeit  goods  over  the  Internet,  feedback  received  from 
stakeholders  indicates  that  intermediaries  (for  example  online  market  places  such  as  online 
shopping sites) have realized that the presence and the sale of counterfeit goods via their sites 
undermines their efforts to be regarded as a safe place to buy and sell products and that their 
reputation  is  tarnished.  In  many  cases,  these  intermediaries  therefore  have  adopted 
comprehensive  policies  on  the  protection  of  intellectual  property  rights  which  are  clearly 
spelled out on their sites. These policies include sanctions for users which breach the rules, in 
particular for the repeat infringers, comprehensive notice and take-down processes and other 
tools  that  allow  a  timely  elimination  of  illegal  offers,  the  sharing  of  information  with 
rightholders  and  reimbursement  schemes  for  consumers  who  unintentionally  bought 
counterfeit goods on their site. 

All  these  measures  have  been  applied  without  affecting  the  liability  status  of  the 
intermediaries and have significantly contributed towards the elimination of counterfeiting on 
the Internet; however, problems remain. 

Injunctions  against  intermediaries  whose  services  are  used  by  a  third  party  to  infringe 
copyright or related rights were already enshrined in Article 8(3) of Directive 2001/29/EC on 
the  harmonisation  of  certain  aspects  of  copyright  and  related  rights  in  the  information 
society39 (and subsequently in Article 11 (third sentence) of Directive 2004/48). However, it 
became  clear  after  the  implementation  of  Directive  2001/29/EC  that  some  Member  States 
interpreted  this  provision  rather  restrictively,  as  to  only  provide  injunctive  relief  against 
intermediaries in the context of pending court proceedings or after the decision on the merits 
of the case, and not as a provisional measure.  

To  remedy  this  restrictive  approach,  Article  9  of  the  Directive  applies  to  all  intellectual 
property  rights  as  a  provisional  measure,  i.e.  irrespective  as  to  whether  the  formal  court 
proceedings on the same case are pending or not but where, nevertheless, an alleged infringer 
is  concerned.  The  article  therefore  introduced  a  new  element  which  needed  to  be  reflected 
through changes in national laws in almost all Member States. It results from Member States' 
reports  that  injunctions  against  intermediaries  are  used  relatively  often  as  the  infringers 
are  often  unknown.  It  has  been  reported  by  the  Member  States  and  legal  practitioners  that 
injunctions against intermediaries often encourage the infringing party to engage in settlement 
discussions.  Several  Member  States  stressed  the  importance  of  interlocutory  injunctions  in 
cases related to the Internet. It was pointed out that one effect of the Directive was that new 
measures  clarified  that  intermediaries  (e.g.  Internet  service  providers)  also  have  certain 
responsibilities  (and  obligations)  and  that  they  cannot  rely  on  "absolute  immunity"  when 
intellectual property rights are infringed. Injunctions have also been successfully used towards 
intermediaries  in  order  to  block  access  to  the  sites  which  facilitate  works  protected  by 
copyright or related right without the consent of the rightholder.40 

38 

39 
40 

Directive  2000/31/EC  of  8  June  2000  on  certain  legal  aspects  of  information  society  services,  in 
particular electronic commerce, in the Internal Market (Directive on electronic commerce), OJ L 178, 
17.7.2000, p.1.  
OJ L 167, 22.6.2001, p. 10.  
In  Denmark,  injunction  against  Tele  2  A/S  was  granted  by  the  court  to  block  access  to  a  Russian 
website.  In  another  case  in  Denmark,  DMT  2  A/S  (now  Sonofon  A/S)  was  required  by  the  court  to 
prevent access to a popular website. 

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However,  some  Member  States41  report  that  injunctions  against  intermediaries  have  been 
more difficult to apply due to difficulties to execute court orders against intermediaries who 
have not been parties to the proceedings. 

Furthermore,  it  appears  that  in  some  Member  States  it  is  not  possible  to  issue  injunctions 
unless  the  liability  of  an  intermediary  is  established.  However,  neither  Article  11  (third 
sentence)  of  the  Directive,  nor  Article  8(3)  of  Directive  2001/29  link  injunctions  with  the 
liability  of  an  intermediary.  Therefore,  although  Directive  2000/31/EC  on  certain  legal 
aspects  of  information  society  services,  in  particular  electronic  commerce,  in  the  Internal 
Market42 (hereinafter referred to as "the e-commerce Directive") provides certain exemptions 
in  relation  to  the  liability  of  intermediaries  who  provide  information  society  services  where 
certain conditions are satisfied, such exemptions do not prevent the possibility of granting an 
injunction against intermediaries covered by the scope of Articles 12 to 14 of the Directive. 
Injunctions against intermediaries are not intended as a penalty against them, but are simply 
based on the fact that such intermediaries (e.g. Internet service providers) are in certain cases 
in the best position to stop or to prevent an infringement. This interpretation is confirmed by 
Articles 12(3), 13(2) and 14(3) and by Recital 45 of the e-commerce Directive43 and Recital 
59 of Directive 2001/29/EC on the harmonization of certain aspects of copyright and related 
rights in the information society44.  

As  far  as  third  parties  are  concerned,  these  are  only  addressed  indirectly  in  Article  8(3)  of 
Directive 2001/29 and Article 11 (third sentence) of Directive 2004/48 where Member States 
are  required  to  ensure  that  rightholders  are  in  a  position  to  apply  for  an  injunction  against 
intermediaries  whose  services  are  used  by  a  third  party  to  infringe  a  copyright  tor  related 
right. The aim of the respective provisions of each those Directive is that injunctive relief can 
be  granted  against  the  intermediary  irrespective  whether  there  has  been  a  determination  of 
liability of the intermediary or the third party. Other than these provisions, third party liability 
has been left to the legal system of each Member State. 

2.5.2.  Permanent injunctions (Article 11) 

Article 11 of the Directive requires that where a judicial decision confirming an infringement 
of  an  intellectual  property  right  is  taken,  judicial  authorities  may  issue  an  injunction 
('permanent'  injunction)  against  the  infringer  aimed  at  prohibiting  the  continuation  of  the 
infringement.  In  the  same  way  as  temporary  injunctions,  permanent  injunctions  can  also  be 
issued  against  intermediaries  and  they  may  be  issued  against  them  irrespective  of  the 

41 
42 
43 

44 

E.g. Czech Republic, Estonia. 
OJ L 178, 17.7.2000, p. 1. 
Recital 45 of Directive 2000/31/EC reads: "(45) The limitations of the liability of intermediary service 
providers established in this Directive do not affect the possibility of injunctions of different kinds; such 
injunctions  can  in  particular  consist  of  orders  by  courts  or  administrative  authorities  requiring  the 
termination  or  prevention  of  any  infringement,  including  the  removal  of  illegal  information  or  the 
disabling of access to it.". 
Recital 59 of Directive 2001/29/EC reads: "(59) In the digital environment, in particular, the services of 
intermediaries  may  increasingly  be  used  by  third  parties  for  infringing  activities.  In  many  cases  such 
intermediaries are best placed to bring such infringing activities to an end. Therefore, without prejudice 
to any other sanctions and remedies available, rightholders should have the possibility of applying for 
an  injunction  against  an  intermediary  who  carries  a  third  party's  infringement  of  a  protected  work  or 
other subject-matter in a network. This possibility should be available even where the acts carried out 
by  the  intermediary  are  exempted  under  Article  5.  The  conditions  and  modalities  relating  to  such 
injunctions should be left to the national law of the Member States.". 

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intermediaries' (potential) liability. Since injunctions against the infringers are reported as 
having  been  used  by  the  Member  States  already  prior  to  the  adoption  of  the  Directive,  the 
Directive  seems  to  have  had  a  limited  impact  in  this  respect.  Again,  injunctions  against 
intermediaries  were  a  new  element  which  had  to  be  introduced  into  the  national  laws  in 
almost all Member States.  

2.5.3. 

Scope of the injunctions 

The  scope  of  the  injunctions  seems  to  be  generally  determined  by  the  scope  of  the  rights 
and/or the attacked infringement. The dictum of an injunction in the Member States differs in 
its degree of detail. Recently, certain problems in relation to the scope of the injunctions (both 
interlocutory and permanent) have arisen with a view to infringements committed through the 
Internet.  In  the  music  and  film  sectors,  injunctions  often  tend  to  be  'title  specific'. 
Rightholders therefore have to provide a full list of titles when asking for an injunction and 
the injunction will normally relate only to the indicated titles, while infringements with a view 
to titles not contained in the list can continue. Similar problems seem to exist with a view to 
the sale of counterfeit goods via online market places. 

Diverging opinions on this issue have resulted in two requests for preliminary rulings being 
submitted to the Court of Justice of the European Union. 

In  case  C-324/09  (L'Oréal  v  eBay)  which  concerns  the  sale  of  counterfeit  goods  via  an 
intermediary  who  is  an  online  marketplace,  the  referring  UK  High  Court  of  Justice  asked 
whether the injunction as described in Article 11 of the Directive should have been interpreted 
as requiring Member States to ensure that the trade mark proprietor could obtain an injunction 
against an intermediary to prevent further infringements of the said trade mark, as opposed to the 
continuation of that specific act of infringement, and if so, what the scope of the injunction would 
be. 

In another case C-70/10 (Scarlet v SABAM) the referring Cour d'appel de Bruxelles asked 
the  Court  of  Justice  of  the  European  Union  whether  the  national  courts  may  also  issue  an 
injunction  against  intermediaries  whose  services  are  used  by  a  third  party  to  infringe  a 
copyright  or  related  right,  to  order  an  Internet  service  provider  to  introduce,  for  all  its 
customers,  in  abstracto  and  as  a  preventive  measure,  exclusively  at  the  cost  of  that  Internet 
service  provider  and  for  an  unlimited  period,  a  system  for  filtering  all  electronic 
communications,  both  incoming  and  outgoing,  passing  via  its  services,  in  particular  those 
involving the use of peer-to-peer software, in order to identify on its network the sharing of 
electronic  files  containing  a  musical,  cinematographic  or  audio-visual  work  in  respect  of 
which the applicant claims to hold rights, and subsequently to block the transfer of such files, 
either at the point at which they are requested or at which they are sent. It also asked whether 
the  principle  of  proportionality  should  be  applied  when  deciding  on  the  effectiveness  and 
dissuasive effect of the measures sought.  

Both procedures are currently pending before the Court of Justice of the European Union. 

2.5.4.  Cross-border injunctions 

Cross-border injunctions pose different problems, depending on the nature of the intellectual 
property right that is being infringed. 

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In  cases  of  infringements  of  the  Community  trade  mark45,  or  of  a  Community  design46, 
granting  of  such  cross-border  injunctions  by  the  European  Union  trade  mark  courts  (or 
European  Union  design  courts)  is  foreseen  by  the  law  as  these  rights  are  unitary  EU  titles. 
Stakeholders,  however,  report  that,  in  practice,  cross-border  injunctions  are  generally  not 
granted by the courts of the Member States even in the case of these rights. 

The  situation  is  even  more  complex  for  infringements  of  patent  rights,  in  the  absence  of  a 
uniform title, i.e. an EU patent. In the late 1990s, some courts began to issue injunctions in 
cases  of  patents  infringements  which  reached  beyond  the  territorial  boundaries  of  the 
respective  jurisdiction.  This  “legal  innovation”  started  in  the  Netherlands  and  was 
subsequently  picked  up  by  courts  in  various  other  countries.  This  judicial  practice  soon 
became rather controversial, with some national courts following the Dutch example (e.g. in 
Germany)  while  other  courts  (e.g.  in  the  UK)  refused  to  assume  jurisdiction  over  foreign 
patents.  From  the  perspective  of  patent-holders,  cross-border  injunctions  were  highly 
attractive  since  they  lowered  the  cost  of  litigation  and  opened  new  avenues  in  terms  of 
litigation  strategy.  Subsequently,  the  European  Court  of  Justice  issued  rulings  in  two  cases, 
which resulted in limiting to an important extend the practice of cross-border injunctions for 
patent infringements.47 The decision of the court in Roche v. Primus and Goldberg effectively 
strongly limited the possibility to bring proceedings against several patent infringers even if 
patents belong to the same group of companies acting in a coordinated manner in accordance 
with a common policy elaborated by one of them. However, a court having jurisdiction on the 
basis  of  the  defendant's  domicile  (Article  2  of  the  Regulation  44/2001)  may  still  have  the 
power to issue injunctions with extra-territorial effect.  

As regards granting cross-border injunctions in cases of copyright infringements, there does 
not seem to be an established jurisprudence. It could therefore seem useful to examine under 
which  conditions  such  injunctions  can  be  granted.  A  distinction  between  the  rules  of 
attributing  jurisdiction  could  be  made.  While  the  jurisdiction  of  a  court,  when  based  on  the 
place where the infringement causes harm, is limited to measures concerning its own territory, 
no such limitation exists when jurisdiction is based on the domicile of the defendant. In this 
later case, cross-border injunctions are not excluded.  

45 

46 

47 

Article  103(2)  of  Council  Regulation  (EC)  No  207/2009  on  the  Community  trade  mark  reads:  "A 
Community  trade  mark  court  whose  jurisdiction  is  based  on  Article  97(1),  (2),  (3)  or  (4)  shall  have 
jurisdiction to grant provisional and protective measures which, subject to any necessary procedure for 
recognition and enforcement pursuant to Title III of Regulation (EC) No 44/2001, are applicable in the 
territory of any Member State. No other court shall have such jurisdiction.". 
The  territorial  scope  of  the  measures  ordered  by  a  Community  trade  mark  court,  which  finds  that  an 
infringement has been committed, is currently the subject of a request for preliminary ruling in the case 
C-235/09 before the Court of Justice of the European Union. 
Article  90(3)  of  the  of  Council  Regulation  (EC)  No  2002/6  on  the  Community  design  reads:  “A 
Community  design  court  whose  jurisdiction  is  based  on  Article  82(1),  (2),  (3)  or  (4)  shall  have 
jurisdiction  to  grant  provisional  measures,  including  protective  measures,  which,  subject  to  any 
necessary  procedure  for  recognition  and  enforcement  pursuant  to  Title  III  of  the  Convention  on 
Jurisdiction and Enforcement, are applicable in the territory of any Member State. No other court shall 
have such jurisdiction.”. 
Judgment  of  13  July  2006  in  the  case  C-4/03  Gesellschaft  für  Antriebstechnik  mbH  &  Co.  KG  v 
Lamellen und Kupplungsbau Beteiligungs KG (GAT v LUK); and judgment of 13 July 2006 in the case 
C-539/03  Roche  Nederland  BV  and  others  v  Frederick  Primus,  Milton  Goldenberg  (Roche  v.  Primus 
and Goldberg). 

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2.6. 

Corrective and Alternative Measures (Articles 10 and 12) 

Article  10  of  the  Directive  requires  that  the  competent  judicial  authorities  may  order  recall 
from  the  channels  of  commerce  of  goods  which  have  been  found  to  be  infringing  an 
intellectual property right, and in appropriate cases also materials and implements principally 
used in the creation or manufacture of these goods. Furthermore, their definitive removal from 
the channels of commerce or their destruction may be ordered. Such measures shall be carried 
out at the expense of the infringer. 

2.6.1.  Meaning and purpose of "recall and definitive removal of infringing goods from the 

channels of commerce" 

As far as recall and definitive removal of infringing goods from the channels of commerce 
are concerned, these measures appear to have been new to most Member States' legislation on 
intellectual property. Only few Member States seem to have been familiar with this kind of 
measures from the legislation on consumer protection. However, rightholders seem to request 
these measures not very often. This may be due, to a large extent, to the limited enforceability 
of the measures, particularly when an infringer is no longer the owner of the goods which are 
to be recalled or definitely removed and therefore has no means to dispose of the goods (for 
example  when  the  infringing  goods  have  already  reached  consumers  or,  in  certain  cases, 
retailers).  It  has  also  been  reported  that  the  courts  are  rather  hesitant  to  order  recall  or 
definitive removal of the infringing goods, in particular in cases where the goods reached the 
final consumers. 

Furthermore, Member States have been using these measures in different ways. This may be 
partly  due  to  the  fact  that  the  Directive  does  not  define  these  two  measures  and  does  not 
define the difference between them. Most Member States seem to use 'recall' as a temporary 
measure, which maybe reversed following a final decision. Thus, recall seems to be used by 
the  majority  of  the  Member  States  when  the  goods  are  no  longer  in  the  possession  of  the 
defendant. The defendant then is usually ordered by the court to claim the goods back from its 
customers (wholesalers, distributors, retailers etc.). 'Definitive removal' indicates the finality 
of the ordered measure for most Member States, and in some Member States (e.g. France) an 
order for definitive removal is often used as a precondition for destruction. In some countries, 
recall  and  definitive  removal  are  used  without  any  distinction  (e.g.  Greece,  Spain,  and 
Romania).  In  Sweden  a  non-exhaustive  list  of  measures,  including  those  mentioned  in  the 
Directive has been introduced with explicit references to other measures, such as alteration or 
the taking into custody for the remainder of the term of protection. Finally, there seem to be 
different views as to whether these measures may be ordered by the courts only as a result of 
the proceedings on the merits of the case or also as a provisional measure. In some Member 
States (e.g. in Poland, Denmark), recall may be issued as a preliminary measure, before the 
proceedings  on  the  merits  are  commenced.  In  Germany  it  has  been  reported  by  the 
stakeholders that according to the prevailing case-law, claims for recall or definitive removal 
may only be raised in proceedings on the merits and not in preliminary proceedings.48  

The  short  time  that  has  passed  since  the  transposition  of  the  Directive,  in  many  Member 
States  has  not  allowed  to  acquire  sufficient  experience,  on  the  side  of  the  courts,  with  the 

48 

Although there are some other opinions saying that recall may be included into injunction claim, in case 
the infringers still control the infringing goods. 

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corrective  measures,  and  especially  the  recall  and  definitive  removal  from  the  channels  of 
commerce. This makes it difficult, at this stage, to determine their overall effectiveness.  

2.6.2.  Destruction of the goods as a preferred corrective measure 

Generally, the destruction of infringing goods seems to be the preferred (and most commonly 
used)  corrective  measure.  A  court  decision  confirming  an  infringement  normally  is  the 
necessary  precondition49.  The  destruction  is  provided  for  as  a  civil  sanction,  therefore  the 
injured  party  must  specifically  request  destruction  (whereas  in  criminal  and  administrative 
proceedings  it  may  be  ordered  by  the  competent  court/administrative  board  ex  officio). 
However,  when  the  destruction  of  infringing  goods  is  ordered  in  civil  law  proceedings,  the 
question arises who should bear the costs of the destruction and the related costs of storage. 

According  to  Article  10(2)  of  the  Directive,  these  costs  have  to  be  born  by  the  infringer 
(defendant).  However,  practice  shows  that  these  costs  often  have  to  be  borne  by  the 
rightholders  who  then  are  given  the  right  to  claim  reimbursement  from  the  infringers 
(defendants). Moreover, when rightholders subsequently claim these costs from the infringer, 
the latter often turns out to be insolvent (in liquidation), which means that these costs cannot 
be  recovered.  In  transhipment  cases  (e.g.  external  transit,  customs  warehousing  etc.)  the 
defendant  is  usually  unknown.  Good  faith  intermediaries/service  providers  are  normally  not 
ordered to pay the costs of the destruction (and related costs of storage), but there seem to be 
very few precedents in this respect. In Germany, it has been observed that intermediaries or 
service  providers  become  subject  to  legal  claims  for  destruction  only, where  they  are  either 
'interferer'  ('Störer')  or  direct  contributors  to  the  infringement.  It  could  seem  reasonable  to 
provide  that  when  there  is  a  decision  on  the  merits  of  the  case,  the  costs  of  destruction  of 
infringing goods should be imposed by the court directly on the unsuccessful party. 

2.6.3. 

Secondary use of the goods infringing intellectual property rights 

The so-called secondary use of goods infringing intellectual property rights consists e.g. 
in the removal of the infringing sign, logo or trade mark from the goods, in its recycling or its 
donation to charity. 

This issue is not harmonized by the Directive. Consequently, practices in Member States seem 
to differ considerably. In some Member States it seems that goods are destroyed only if their 
secondary use is not possible (e.g. Italy). In other Member States secondary use appears to be 
permitted  only  in  exceptional  cases,  and  there  are  Member  States  where  secondary  use  of 
goods infringing intellectual property rights does not seem to be permitted at all (e.g. France, 
Greece, Slovenia). Additional information is needed in order to judge what role the secondary 
use of goods infringing intellectual property rights should play in the context of enforcement 
of  intellectual  property  rights  and  whether  further  harmonization  in  this  respect  would  be 
useful. 

2.6.4.  Alternative measures 

From  information  received  it  appears  that  less  than  half  of  the  Member  States  have 
implemented Article 12 of the Directive which provides for an option for Member States to 
introduce alternative measures in the form of a pecuniary compensation to the injured party 

49 

An  exception  applies  in  particular  for  geographical  indications  where  the  perishable  nature  of  certain 
products requires the possibility to order their rapid destruction.  

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if  the  person  that  infringed  the  intellectual  property  right  acted  unintentionally  and  without 
negligence,  if  execution  of  other  measures  would  cause  disproportionate  harm  and  if 
pecuniary  compensation  appears  reasonably  satisfactory.50  Furthermore,  in  some  of  these 
Member  States51  the  conditions  for  an  'unintentional  infringement  without  negligence'  are 
interpreted very narrowly given that the standards to act with due care are set at a relatively 
high level. 

2.7. 

Damages and legal costs (Articles 13 and 14) 

Article  13(1)  of  the  Directive  requires  Member  States  to  enable  the  competent  judicial 
authorities  to  order  the  infringer  who  knowingly,  or  with  reasonable  grounds  to  know, 
engaged  in  an  infringing  activity,  to  pay  the  right  holder  damages  appropriate  to  the  actual 
prejudice suffered by him as a result of the infringement. Where the infringer acted in good 
faith  (i.e.  without  reasonable  ground  to  know),  Member  States  have  the  possibility  to  allow 
the judicial authorities to order the recovery of profits or the payment of damages, which may 
be  pre-established  (Article  13(2)).  Article  14  requires  that  the  reasonable  and  proportionate 
legal  costs  and  other  expenses  incurred  by  the  successful  party  shall  be  borne  by  the 
unsuccessful party, unless equity does not allow it.  

Since the pecuniary value of intellectual property may be rather difficult to measure, also due 
to  its  'abstract'  nature,  practice  has  shown  that  assessing  damages  for  infringements  of 
intellectual  property  rights  is  often  complicated.  Damages  from  sales  of  counterfeit  goods 
over the Internet are even more difficult to assess, and it often happens that after having been 
discovered,  infringers  quickly  re-appear  under  a  different  name.  This  situation  has  not 
changed significantly through the entry into force of the Directive. In most cases only slight 
adjustments of national laws governing the calculation and award of damages were needed to 
make Member States comply with the Directive. However, due to the relatively low number 
and the considerable length of the judicial proceedings, there is not yet an established case 
law on the evaluation and assessment of damages since the transposition of the Directive in 
the Member States. At the same time it seems that existing judgements have not been overly 
explicit and detailed on how awarded damages have been calculated. 

However, most rightholders report to prefer quick provisional measures (e.g. injunctions) and 
not damages claims as the main enforcement remedy. The reasons for this are the high costs 
of  the  proceedings  which  are  rarely  reflected  in  the  damages  awarded  and  the  length  of 
judicial  proceedings  involving  infringements  of  intellectual  property  rights.  Therefore 
damages awards in intellectual property cases are not requested by rightholders as a matter of 
course. 

2.7.1.  Calculation of damages 

The  Directives  provides  for  two  possibilities  for  the  judicial  authorities  to  determine  the 
amount of the damages:  

(1) 

They can base the amount on the actual prejudice (e.g. the rightholder's lost profits, 
infringer's  unfair  profits,  moral  prejudice  and  other  negative  economic 
the 
consequences); 

50 

51 

This article was implemented e.g. by Denmark, Estonia, Germany, Lithuania, Malta, Poland, Romania 
and Sweden. 
E. g. Germany. 

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(2) 

Or  they  can  award  lump  sum  damages  based  on  at  least  the  (single)  amount  of 
royalties which would have been due if the infringer has requested authorisation to use 
the  intellectual  property  right(s)  in  question  (e.g.  if  an  infringer  had  concluded  a 
licensing agreement with a right holder).  

2.7.2.  Wilful and negligent infringements and infringements committed in good faith 

It  appears  that  all  Member  States  provide  for  damages  in  cases  of  wilful  or  negligent 
infringements  of  intellectual  property  rights  (Article  13(1)).  However,  some  Member  States 
also  award  damages  for  infringements  committed  in  'good  faith'  (Article  13(2)),  and 
therefore the mere existence of an infringement is a sufficient justification for the rightholder 
to  claim  damages.  Certain  specificities  seem  to  exist  for  copyright  infringements  and  for 
infringements of rights related to copyright where often good faith is irrelevant for claiming 
damages. This is different from patent infringements, where in some Member States damages 
may be claimed only for infringements committed intentionally. 

Most  Member  States  seem  to  award  damages  regardless  of  whether  the  infringement  is 
committed on a commercial scale, and there is generally no overall limitation on damages. 

2.7.3.  Damages appropriate to the actual prejudice suffered by the rightholder 

2.7.3.1.  Rightholders' lost profits 

When awarding damages, it appears that all Member States take the rightholders' lost profits 
into account. Lost profits are usually defined as profits which would have been earned by the 
rightholder, in the absence of the infringement, or which could have been justifiably expected 
(excluding  the  infringer's  profits).  Nevertheless,  in  some  Member  States  it  seems  unclear, 
whether the price of the original product or the price of a counterfeit/pirated product (which 
may  be substantially  lower in some  cases) should be taken into account when assessing the 
rightholder's lost profits. Moreover, lost profits can be difficult to prove, in particular where 
infringing  activities  undermine  the  value  of  legal  sales.  Extensive  infringing  activities  often 
make the branded goods lose their 'exclusivity' which leads to a decline in consumer demand, 
damage to goodwill etc.. 

2.7.3.2.  Infringers' profits 

The profits unlawfully made by the infringer ('unjustified enrichment') constituted a new 
aspect  for  assessing  damages  in  some  Member  States  and  it  has  been  implemented  into  the 
national legislation in very different ways.  

Many Member States require a rightholder to prove that profits were made with or as a result 
of  the  infringing  products  (causal  link).  Infringers  may  sometimes  make  higher  profits  with 
the infringing products than the rightholders with their branded goods. Rightholders appear to 
find it very difficult to prove that they would have earned the same profits as the infringers, 
particularly where the infringers offer their products under conditions that significantly differ 
from  those  of  the  legal  channels  (e.g.  lower  prices,  lower  manufacturing  costs,  absence  of 
related services etc.). Furthermore, in some Member States52 it appears that infringers' profits 
can only be taken into consideration once, either as a recovery of unfair profits or as damages 

52 

E.g. Slovak Republic. 

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(or part of damages), but not in a cumulative way. In other  Member States53 the transfer of 
infringers'  profits  are  awarded  as  an  alternative,  when  the  profits  are  higher  than  the 
rightholder's calculated damages (e.g. the rightholders' lost profits). Finally, in some Member 
States54, in addition to damages, also the transfer of the infringer's profits may be ordered. 

2.7.3.3.  Moral damages and damages for negative economic consequences 

With respect to moral damages (as  part of immaterial  damages) and  damages for negative 
economic consequences (as part of material damages; for example price erosion, tarnishment 
of  a  trademark  etc.),  rightholders  report  that  they  are  not  requesting  them  as  a  matter  of 
course,  and  that  where  such  requests  have  been  made  they  have  only  occasionally  been 
successful. They also report that moral damages tend to be rather low.55  

Therefore, despite the fact that rightholders have the right to claim damages in these cases it 
seems that damages for negative economic consequences and moral damages are rarely used 
in practice. It appears that one of the main reasons for this is that proving such damages may 
be very difficult. However, Member States' laws are too recent and too few precedents exist 
as this stage to properly assess the implications of this provision of the Directive in practice. 

2.7.4.  Lump sum damages 

Member States generally provide for lump sum damages calculated on the basis of the amount 
of  royalties  that  would  have  been  due  if  the  infringer  had  sought  an  authorisation  (licence) 
from the rightholder. Where a licence royalty is already fixed and used in the relevant sector, 
this  amount  will  be  used;  if  there  is  not  an  agreed  royalty  rate  or  where  it  is  difficult  to 
determine  precise  rates,  often  an  estimated  average  royalty  related  to  the  specific  type  of 
business involved is used.  

From  information  received  it  seems  that  there  are  doubts  whether  the  criteria  for  the 
calculation  of  damages  (damages  appropriate  to  the  actual  prejudice  suffered  by  the 
rightholder and lump sum damages) are alternative, and therefore leave a real choice to the 
judicial  authorities,  or  whether  the  lump  sum  damages  only  come  into  play  if  the  damage 
cannot be assessed according to the actual prejudice suffered. It appears that Member States' 
practice  in  this  respect  varies.  In  some  Member  States  (e.g.  Hungary,  Latvia,  Slovak 
Republic)  it  appears  that  lump  sum  damages  are  available  only  if  damages  cannot  be 
calculated  otherwise,  for  example  in  cases  when  the  actual  prejudice  cannot  be  calculated 
precisely. In those cases, the amount of the damage is assessed on the basis of the principle of 
equity. In other Member States (e.g. the Netherlands, Poland), it seems that courts or parties 
can freely choose according to which criterion they assess the damage. 

The wording of the Directive suggests the judicial authorities should be allowed to assess the 
damage according to the actual prejudice or to award them as a lump sum, as they consider 
more appropriate. It could also be desirable for the rightholders to be able to opt for one or the 
other method of calculation, depending on which is for them the most favourable. 

53 
54 
55 

E.g. Germany and Italy. 
E.g. Benelux countries in cases of bad faith. 
In  Hungary,  there  seems  to  be  an  "upper"  limit  of  HUF  1  million  (approx.  EUR  3,500)  for  moral 
damages awards. 

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2.7.5.  More far-reaching national rules 

It  should  be  noted  that,  in  respect  of  specific  infringements  (mostly  infringements  of 
copyright and rights related to copyright), a significant number of Member States56 appear to 
have  gone  beyond  the  minimum  rules  set  out  by  the  Directive  by  introducing  lump  sum 
damages  set  as  multiple  (mostly  double)  amounts  of  royalties  (licensing  fees)  due. 
Furthermore, at least one Member State reports to provide for punitive damages.57 

2.7.6.  Legal costs and other expenses 

Most Member States did not need to implement this provision specifically as their previous 
civil procedural laws already covered the Directive's requirements. In principle, the successful 
party can recover costs of proceedings necessary for the effective protection or enforcement 
of  intellectual  property  rights.  However,  the  amount  to  be  reimbursed  can  be  reduced  or 
eliminated  in  cases  where  the  wins  are  only  partial.  Moreover,  if  the  costs  incurred  are 
disproportionate or unnecessary, the courts can order a partial recovery of the costs.  

The  costs  of  litigation  concerning  intellectual  property  rights  are  often  very  high.  This  is 
partly due to the fact that in order to gather proper and reliable evidence, technical expert(s) 
(e.g. such as patent agents in patent cases or Internet investigator(s)) must be engaged by the 
rightholders.  Moreover,  the  rightholders  must  sometimes  do  'test  purchases'  in  order  to 
confirm an infringement of their rights or to gather evidence. Translations are often required, 
too.  Furthermore,  given  the  (often)  cross-border  nature  of  the  infringing  activities,  experts 
from  several  jurisdictions  may  be  required  to  assist.  These  costs  are  not  always  fully  taken 
into consideration by the courts. In some jurisdictions, only the fees of the experts appointed 
by the court are reimbursed. 

It  appears  that  rightholders  rarely  are  reimbursed  all  legal  costs  and  other  expenses  they 
encounter  to  protect  their  rights  in  the  proceedings  concerning  infringements  of  intellectual 
property rights. Stakeholders' consultation revealed the following, very different, experiences 
with the reimbursement of the legal costs in a successful litigation: 10-50% in Denmark, 'only 
a small percentage' in Greece, 30% in Italy, 10-30% in Luxembourg, 50% in Cyprus, 66%-
100%  in  Romania,  'very  low'  in  Spain,  about  75%  in  Sweden,  50-70%  in  Austria,  80%  in 
Ireland.  The  possibility  of  a  100%  reimbursement  was  reported  for  Lithuania,  Hungary, 
Slovakia  and  Austria  for  simple  cases.  Many  stakeholders  were  not  able  to  state  the 
percentage  because  of  inconsistent  experience  and  disparate  case-law  (e.g.  Latvia).  One 
respondent  (Slovakia)  stated  that  lawyers'  fees  are  substantially  limited  when  the  claims 
cannot be assessed in monetary terms (e.g. where the rightholder requests termination of the 
infringing activities). 

To  summarise,  it  seems  that  the  reimbursement  of  legal  costs  and  other  expenses  in  a 
successful litigation usually remains far below the actual legal costs incurred. 

2.8. 

Codes of Conduct 

Article 17 of the Directive obliges the Member States to encourage the development, by trade 
or  professional  organisations,  of  codes  of  conduct  at  Union  level  that  are  aimed  at 
contributing towards the enforcement of intellectual property rights. 

56 
57 

E.g. Austria, Belgium, Czech Republic, Germany, Greece, Lithuania, Poland, Romania and Slovenia. 
Slovenia. 

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In  several  Member  States  associations  have  made  use  of  such  a  collaborative  approach  and 
have  put  in  place  national  codes  of  conducts  (voluntary  arrangements)  to  combat 
counterfeiting  and  piracy.58  In  some  cases,  such  voluntary  agreements  became  the  basis  for 
legislation.59  However,  in  other  Member  States  such  arrangements  would  seem  not  to  be 
possible,  mainly  due  to  the  restrictions  imposed  by  privacy  laws  and  protection  of  personal 
data, which prevent intermediaries (e.g. Internet service providers) to forward warning notices 
to the alleged infringers or to share information about the alleged infringer's identity outside 
the scope of judicial proceedings. 

3. 

ABSENCE  OF  HARMONIZED  PROTECTION  OF  INTELLECTUAL  PROPERTY  RIGHTS 
THROUGH CRIMINAL LAW  

Counterfeiting  and  piracy  appears  to  be  increasingly  linked  to  organised  crime60  raising 
security and safety concerns and is also proven to be spreading over the Internet. Therefore 
measures taken against cybercrime at EU level should be seen as relevant and complementary 
to the legislative and non legislative measures taken and to be taken in the civil and criminal 
area. 

Despite  the  fact  that  almost  all  Member  States  provide  for  criminal  measures  to  protect 
intellectual  property  rights,  the  disparities  between  the  national  definitions  of  the  kind  and 
level  of  penalties  for  the  various  infringements  of  intellectual  property  rights  may  make  it 
difficult to combat these infringements effectively.  

The  Commission  is  currently  analysing  to  what  extent  protection  of  intellectual  property 
rights through criminal law via a harmonized directive on criminal measures is necessary to 
supplement  the  enforcement  of  intellectual  property  rights  through  civil  law.  Absence  of 
harmonisation in the area of criminal measures to protect intellectual property rights could be 
a serious obstacle and hinder cross-border cooperation between the law enforcement agencies. 

Following  this  assessment,  the  Commission  intends  to  present  a  new  legislative  proposal 
which would replace the 2006 proposal for a Directive on criminal sanctions61. 

58 

59 

60 

61 

In  Estonia,  it  has  been  reported  that  a  Memorandum  of  Understanding  was  signed  between  Estonian 
Organisation  of  Copyright  Protection  and  several  internet  service  providers  to  enable  the  removal  of 
material that infringes intellectual property rights. In Denmark, internet service providers together with 
the Danish IT Industry Association (ITB) and the Telecommunication Industries in Denmark (TI) have 
agreed to collaborate on combating piracy on the internet and a Code of Conduct for internet service 
providers concerning the enforcement of intellectual property rights has also been agreed. Similarly in 
France, the "Charte de lutte la contrefaçon sur Internet" was signed between the French online market 
places and rightholders to advance the fight against the sale of counterfeit goods over the internet. 
For  example  "Élysée  agreement  for  the  development  and  protection  of  creative  works  and  cultural 
programmes  on  the  new  networks"  was  a  basis  of  the  legislation  which  was  adopted  subsequently  in 
France. 
See 
http://www.europol.europa.eu/publications/European_Organised_Crime_Threat_Assessment_(OCTA)/
OCTA2009.pdf. 
Amended proposal for a Directive of the European Parliament and of the Council on criminal measures 
aimed at ensuring the enforcement of intellectual property rights (COM(2006) 168 final).  

-  EU  Organised  Crime  Threat  Assessment', 

e.g.  Europol, 

'OCTA 

2009 

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4. 

CONCLUSION 

On the basis of the information available at this stage it can be concluded that the Directive 
has  provided  a  solid  basis  for  the  enforcement  of  intellectual  property  rights  in  the  internal 
market and led to considerable improvements of the legal frameworks in place in the Member 
States. 

However,  the  analysis  shows  that  some  of  the  provisions  of  the  Directive  have  led  to 
diverging  interpretations  by  the  Member  States  and  by  the  courts,  and  some  of  these 
provisions have not fully reached the objectives pursued by the Directive. At the same time, 
infringements of intellectual property rights have reached a significant level. The provisions 
concerned  could  therefore  be  clarified.  Clarification  could  also  be  necessary  in  order  to 
reinforce the dissuasive effect of the Directive and therefore its effectiveness. 

EN 

26 

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Annex 1: The transposition of the Directive by the Member States 
and Member States' application reports 

1. 

Transposition process 

Few Member States transposed the Enforcement Directive on time, i.e. by 26 April 2006: only 
5 Member  States  (Denmark,  Hungary,  Italy,  Slovenia  and  the  UK)  complied  with  the 
deadline.  

Most  of  the  Member  States  were  late  with  the  implementation.  20  infringements  for  non-
communications  were  recorded,  namely  against  Austria,  Belgium,  Cyprus,  Czech  Republic, 
Estonia,  Finland,  France,  Germany,  Greece,  Ireland,  Latvia,  Lithuania,  Luxembourg,  Malta, 
the Netherlands, Poland, Portugal, Slovak Republic, Spain and Sweden. Out of these, 15 cases 
were  closed  before  reaching  the  stage  of  referral  to  the  Court  of  Justice  of  the  European 
Union. A referral was made for Germany, Luxembourg, Sweden, France and Portugal.  

Subsequently,  the  case  was  withdrawn  for  France  and  Portugal.  The  last  Member  States  to 
implement the Directive were Germany (July 2008), Sweden (April 2009) and Luxembourg 
(June  2009),  after  a  decision  confirming  an  infringement  had  been  taken  by  the  Court  of 
Justice. Despite of having notified complete transposition, in the course of the works to draw 
up  this  report  it  turned  out  that  Greece  seems  not  to  have  implemented  the  Directive  it  its 
entirety yet, but only in respect of copyright and related rights.  

2. 

Implementation Reports 

Article 18(1) of the Directive obliges Member States to submit, three years after the expiry of 
the  deadline  for  the  transposition,  a  report  to  the  Commission  on  the  implementation  of  the 
Directive. 

However,  even  by  autumn  2010,  not  all  national  reports  have  been  received  by  the 
Commission.  Thus,  Bulgaria  and  Spain  did  not  provide  any  report.  Greece  provided  an 
incomplete report covering only copyright and rights related to copyright. Some reports have 
been  received  by  the  Commission  with  a  significant  delay  (e.g.  the  reports  by  Belgium  and 
Sweden which were received in May 2010, Luxemburg and Portugal only sent their report in 
October 2010). 

Furthermore,  the  completeness  and  the  quality  of  these  national  reports  appear  to  differ 
considerably. The late transposition of the Directive was, for some of reports, the main reason 
for this difference in quality. The most complete reports  are reflecting in depth the national 
situation and contain statistical data including jurisprudence. Some Member States have also 
provided  the  Commission  with  information  on  stakeholders'  perceptions.  Such  reports  have 
been received by the Commission for example from Denmark, Estonia, Germany, Hungary, 
Ireland, Latvia, Lithuania, Poland and Slovenia. 

From  the  other,  less  detailed  reports,  it  was  not  possible  to  make  a  clear  assessment  of  the 
implications  the  Directive  has  had  on  innovation  and  the  development  of  the  information 
society. Cyprus, France, Luxembourg, Malta, the Slovak Republic and the UK have provided 
reports with particularly limited information.  

EN 

27 

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As a result, the Commission has not been able to engage in a critical economic analysis of the 
effects that this Directive may have had on innovation and the development of the information 
society. 

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28 

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Annex 2: Methodology for the Analysis 

1. 

Information gathering from the Member States 

The  Commission's  services  have  carefully  examined  the  national  implementation  reports 
provided  by  the  Member  States  and  have  integrated  information  contained  in  these  reports 
into  the  text  of  the  Staff  Working  Paper.  Apart  from  the  information  contained  in  these 
reports, the Commission did not receive a substantial amount of additional information from 
the  Member  States'  authorities,  neither  during  the  implementation  period,  nor  after  the 
transposition  of  the  Directive  into  the  national  law.  As  a  result,  and  because  of  the  reasons 
mentioned  above,  the  information  received  had  to  be  complemented  from  other  sources,  in 
particular through consultation with rightholders, and in particular through the consultation of 
legal experts from the private sector who meet regularly in the legal subgroup that has been 
formed in the context of the European Observatory on Counterfeiting and Piracy. 

2. 

Information gathering from the stakeholders 

The legal subgroup formed in the context of the European Observatory on Counterfeiting and 
Piracy made an attempt to screen the implementation and the application of the Directive in 
all 27 Member States. It concentrated on the national legislation as well as the national court 
practices.  The  work  was  divided  into  several  sections:  damages  and  legal  costs,  corrective 
measures,  evidence  and  right  of  information  and  injunctions,  where  four  detailed 
questionnaires have been produced by the subgroup together with the Commission services. 
These  questionnaires  were  subsequently  forwarded  to  rightholders  and  legal  practitioners  in 
all  Member  States.  Detailed  responses  are  available  at  the  website  of  the  European 
Commission.62 The summaries of the responses also contain some conclusions and practical 
recommendations for improvement. 

A substantial amount of information was gathered through bilateral contacts and consultation 
papers issued by the business associations. Commission services have also held a number of 
meetings  with  private  sector  stakeholders  and  with  individual  companies  (in  particular 
rightholders and intermediaries) on the operation of the Directive. 

62 

http://ec.europa.eu/internal_market/iprenforcement/observatory/index_en.htm 

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