COMMUNICATION FROM THE COMMISSION TO THE EUROPEAN PARLIAMENT pursuant to Article 294(6) of the Treaty on the Functioning of the European Union concerning the position of the Council on the adoption of a Regulation of the European Parliament and of the Council concerning customs enforcement of intellectual property rights
Date: 2013-05-17
Institutions: European Commission
Subjects: customs regulations, illicit trade, industrial counterfeiting, trade-mark law

EUROPEAN 
COMMISSION 

Brussels, 17.5.2013  
COM(2013) 282 final 

2011/0137 (COD) 

COMMUNICATION FROM THE COMMISSION 
TO THE EUROPEAN PARLIAMENT 

pursuant to Article 294(6) of the Treaty on the Functioning of the European Union 

concerning the 

position of the Council on the adoption of a Regulation of the European Parliament and 
of the Council concerning customs enforcement of intellectual property rights 

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2011/0137 (COD) 

COMMUNICATION FROM THE COMMISSION 
TO THE EUROPEAN PARLIAMENT 

pursuant to Article 294(6) of the Treaty on the Functioning of the European Union 

concerning the 

position of the Council on the adoption of a Regulation of the European Parliament and 
of the Council concerning customs enforcement of intellectual property rights 

1. 

BACKGROUND 

Date of transmission of the proposal to the European Parliament and 
to the Council 
(document COM(2011) 0285 final – 2011/0137 COD): 

24/05/2011. 

Date of the position of the European Parliament, first reading: 

03/07/2012. 

Date of adoption of the position of the Council: 

16/05/2013. 

OBJECTIVE OF THE PROPOSAL FROM THE COMMISSION 

2. 
The proposed Regulation should replace existing Regulation No 1383/20031, which currently 
implements  Section  4  (Special  requirements  related  to  border  measures)  of  Part  III 
(Enforcement  of  intellectual  property  Rights)  of  the  WTO  Agreement  on  Trade  Related 
Aspects of Intellectual Property Rights (TRIPS). 

The  proposal  is  an  integral  part  of  the  strategic  framework  outlined  in  the  Communication 
from the Commission on a Single Market for Intellectual Property Rights2 and is in line with 
the Union’s longstanding policy and strategy on the protection of IPR. This policy has been 
reflected  in  several  Communications  from  the  Commission,  such  as  Europe  20203,  the 
Communication on a Single Market Act4 and the Communication on the EU Internal Security 
Strategy5. 

It aims to strengthen the capability for customs to enforce IPRs at the border : it expands 
the  range  of  IPR  infringements  covered  and  maintains  the  competence  of  customs 
authorities  to  control  all  goods  under  customs  supervision  irrespective  of  their  customs 
treatment; it ensures that high quality information is provided to customs to enable a good 
analysis  and  assessment  of  the  risk  of  infringement  of  IPR;  it  sets  out  the  legal  basis  for  a 

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Council  Regulation  (EC)  No  1383/2003  of  22  July  2003  concerning  customs  action  against  goods 
suspected of infringing certain intellectual property rights and the measures to be taken against goods 
found to have infringed such rights 
Commission  Communication  of  24  May  2011:  A  Single  Market  for  Intellectual  Property  Rights  – 
COM(2011)287 final. 
Commission Communication of 3 March 2010: "A strategy for smart, sustainable and inclusive growth 
– COM(2010)2020 final. 
Commission Communication of 11 November 2010: ‘Towards a Single Market Act - COM(2010) 608 
final/2. 
Commission Communication of 22 November 2010: The EU Internal Security Strategy in Action: Five 
steps towards a more secure Europe – COM(2010)673 final. 

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central  database  for  recording  applications  for  customs  action  and  detentions  as  well  as 
exchange of information between customs authorities (COPIS). 

Certain adjustments to the current procedures are also proposed to ensure that administrative 
burdens are kept to a minimum: it provides for the possibility of destroying goods without 
legal  proceedings,  based  on  agreement  between  the  parties  concerned;  it  establishes  a  new 
procedure for small consignments where goods may be destroyed without the involvement 
of the right-holders. 

It ensures that the legitimate interests of all traders are taken into account: it harmonises 
the implementation of the right to be heard of parties to whom the detention is detrimental 
and adjusts the periods granted to each party within the procedures. 

It  addresses  the  concerns  expressed  by  India  and  Brazil  in  the  context  of  two  WTO 
disputes  launched  in  2010  with  regard  to  "generic"  medicines  in  transit  across  the  EU 
territory:  it  introduces  recital  17  reminding  the  2001  Doha  Declaration  on  the  TRIPS 
Agreement and Public Health, removes current recital 8 ("manufacturing fiction) and follows 
more closely TRIPS wording ("adequate evidence" of IPR infringement is needed for customs 
to detain goods). 

3. 

COMMENTS ON THE POSITION OF THE COUNCIL 

The position of the Council as adopted in the 1st reading fully reflects the agreement reached 
in  the  trilogue  between  the  Council,  the  European  Parliament  and  the  Commission,  as 
concluded on 19 December 2012. The main points of this agreement are as follows: 

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To exclude parallel trade and overruns from the scope of the Regulation. 

To  clarify  that  customs  authority  may  carry  out  customs  controls  and  take 
identification measures provided for in the customs legislation to prevent operations 
in breach of intellectual property laws applicable in the territory of the Union, and in 
order  to  cooperate  with  third  countries  on  the  enforcement  of  intellectual  property 
rights. 

To set out a common procedure for all kinds of IPR infringements falling within the 
scope  of  the  Regulation,  without  prejudice  of  the  specific  procedure  for  small 
consignments. Under such common procedure, goods may be destroyed without the 
need  for  the  right-holder  to  initiate  legal  proceedings  where  he  so  requests,  on 
condition  that  the  declarant  or  holder  of the  goods,  after  being  properly  notified  of 
the detention of the goods by the customs authorities, does not object to destruction. 

To  establish  that  the  procedure  for  small  consignments  only  applies  upon  previous 
request  from  the  applicant  in  that  regard,  and  that  the  customs  authorities  have  the 
possibility to require that the applicant covers the costs incurred by the application of 
this procedure. 

To set out the definition of small consignments in the Regulation, which empowers 
the Commission to adopt delegated acts in accordance with Article 290 of the Treaty 
on  the  Functioning  of  the  European  Union  in  respect  of  amending,  under  certain 
circumstances, the non-essential elements of that definition. 

To  provide,  in  line  with  TRIPS  Article  69  and  with  a  view  to  eliminating 
international trade in goods infringing intellectual property rights, with a legal basis 
for the swift exchange of information between customs authorities in the EU and in 
third  countries  on  such  trade.  In  order  to  ensure  a  uniform  implementation  of  the 
provisions for defining the elements of the practical arrangements for the exchange 

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of data with third countries, implementing powers are conferred on the Commission, 
namely  to  define  those  elements  of  the  practical  arrangements.  The  provisions  on 
transfer  of  data  to  third  countries  are  without  prejudice  to  applicable  provisions  on 
data protection in the EU, and in particular Articles 25 and 26 of Directive 95/46/EC 
and Article 9 of Regulation (EC) No 45/2001. 

To rule out provisions in the Regulation harmonising the right to be heard in favour 
of  the  persons  concerned  by  the  customs  detention  of  goods.  It  is  considered  that 
national laws apply for granting the right to be heard. 

To  broaden  and  clarify  the  list  of  cases  in  which  the  right-holder  may  use  the 
information  that  customs  disclosed  to  him  following  a  customs  detention  of  goods 
under the Regulation. 

To  include  provisions  in  the  basic  act  on  data  collection,  processing,  retention 
periods, exercise of rights and responsibilities in accordance with existing legislation 
on data protection. 

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The Commission fully supported the agreement reached in the trilogue. 

4. 

CONCLUSION 

The Commission can accept the amendments introduced by the Council to its proposal.  

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