COMMUNICATION FROM THE COMMISSION TO THE EUROPEAN PARLIAMENT, THE COUNCIL AND THE EUROPEAN ECONOMIC AND SOCIAL COMMITTEE A balanced IP enforcement system responding to today's societal challenges
Date: 2017-11-29
Institutions: Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs, European Commission
Subjects: European Union Intellectual Property Office, Internet, administrative cooperation, computer piracy, digital technology, economic growth, illicit trade, innovation, intellectual property

EN 

  EN 

   EUROPEAN COMMISSION  Brussels, 29.11.2017  COM(2017) 707 final  COMMUNICATION FROM THE COMMISSION TO THE EUROPEAN PARLIAMENT, THE COUNCIL AND THE EUROPEAN ECONOMIC AND SOCIAL COMMITTEE A balanced IP enforcement system responding to today's societal challenges  {SWD(2017) 430 final}  
 
 
I. 

INTRODUCTION 

Efficient, well-designed and balanced intellectual property (IP) systems are a key lever 
to  promote  investment  in  innovation  and  growth.  Intellectual  Property  Rights  (IPRs)  are 
one of the principal means through which companies, creators and inventors generate returns 
on  their  investment  in  knowledge  and  creation.  Studies  estimate  that  IPR-intensive  sectors 
account for around 42 % of EU GDP (worth some EUR 5.7 trillion annually), generate 38 % 
of all jobs1, and contribute to as much as 90 % of EU exports2. 
The digital revolution has opened up a wealth of new opportunities. The internet has brought 
innovative  goods,  technology  and  creative  content  to  a  much  wider  consumer  base,  thus 
enabling  innovators  and  creators  to  reach  new  markets  and  audiences.  But  the  digital 
revolution also exposes the EU’s IP system to greater risks. The on-line environment allows 
for a much wider and quicker proliferation of IP-infringing goods and content, and makes it 
often more difficult for consumers to distinguish infringing goods and content from genuine 
and  legal  ones.  Moreover,  infringers  of  IPRs  can  hide  behind  fake  identities  and  are  often 
located outside the EU in jurisdictions with weak enforcement regimes.  
All this has resulted in an increase of IP infringements across the globe3. Today counterfeit 
and  pirated  goods  account  for  2.5 %  of  global  trade.  The  EU  industry  is  badly  affected: 
according to a recent study4, 5 % of all imports into the EU are counterfeit and pirated goods, 
corresponding to an estimated EUR 85 billion in illegal trade.  
IPR  infringements  pose  a  specific  threat  to  sectors  where  EU  businesses  are  world  leaders, 
such as clothing, luxury goods and pharmaceuticals, and account for major losses of revenue 
and jobs in these sectors. The European Union Intellectual Property Office (EUIPO) recently 
analysed the scope, scale and impact of IP infringements in nine sectors5 and put total losses 
in the EU at EUR 48 billion6. Europe's creative and cultural industries (music, film, software, 
books)  are  negatively  affected  as  well7.  The  damage  suffered  by  businesses  because  of 

1 Taking into account both direct and indirect employment. 
2 EUIPO, Intellectual property rights intensive industries and economic performance in the EU,  2016. 
3  This  being  said,  there  are  some  positive  developments  as  well.  In  the  field  of  copyright  for  example,  new 
business  models  have  led  to  a  decrease  of  copyright  infringements  in  some  markets  (available  at: 
https://copia.is/library/the-carrot-or-the-stick/).  The  successful  development  of  legal  offers  also  depends  on 
effective  enforcement  measures  of  course.  The  Commission  has  consistently  held  that  fighting  online  piracy 
should  be  combined  with  complementary  actions  including  the  development  of  legal  offers  and  educational 
initiatives (see for instance, the Commission Communications on  Creative content online in the Single Market 
(COM(2007/0836 final) and Towards a modern, more European copyright framework  (COM(2015) 626 final).  
4 OECD/EUIPO, Trade in Counterfeit and Pirated Goods: Mapping the Economic Impact,  2016. 
5  Cosmetics  and  personal  care;  clothing,  accessories  and  footwear;  sporting  goods;  toys  and  games;  handbags 
and luggage; jewellery and watches; recorded music; spirits and wine; and pharmaceuticals. 
6 Available at https://euipo.europa.eu/ohimportal/en/web/observatory/quantification-of-ipr-infringement.  
7  See  for  instance  BASCAP/INTA,  The  economic  impact  of  counterfeiting  and  piracy,  2017,  available  at: 
http://www.inta.org/Communications/Documents/2017_Frontier_Report.pdf,  which  estimated  the  global  value 
of digital piracy in movies, music and software in 2015 to $ 213 billion. See also EUIPO, The Economic cost of 
IPR  Infringement  in  the  recorded  Music  industry  -  May  2016,  available  at:  https://euipo.europa.eu/tunnel-
web/secure/webdav/guest/document_library/observatory/resources/research-and-
studies/ip_infringement/study7/Music_industry_en.pdf.  This  study  found  that  in  2014  the  recorded  music 
industry  lost  approximately  €170  million  of  sales  revenue  in  the  EU  as  a  consequence  of  the  consumption  of 
recorded  music  from  illegal  sources.  See  also  the  UK  Intellectual  Property  Office's  tracking  studies  into  the 
extent of online copyright infringement. The latest version (May 2016) estimated that 15 % of UK internet users 
aged 12+ consumed at least one item of online content illegally between March-May 2016 and that 5% of the 
12+ UK users have exclusively consumed illegal content (available at: 

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counterfeiting and piracy has a negative impact on the jobs they provide in the EU and leads 
to losses of tax revenue and social security contributions8. 
Meanwhile, profits from counterfeiting and piracy often go to criminal organisations. These 
organisation  typically  operate  inside  and  outside  the  EU,  use  both  regular  and  clandestine 
manufacturing plants, infiltrate supply chains, exploit labour, do not pay taxes, launder money 
and endanger consumers9.  
The  2014  IPR  Enforcement  Action  Plan10  marked  a  shift  in  focus  of  the  Commission's  IP 
enforcement policy towards a ‘follow the money’ approach, seeking to deprive commercial-
scale  IP  infringers  of  the  revenue  flows  that  make  their  activities  profitable.  Better  IPR 
enforcement  contributes  to  the  Commission's  priorities  to  create  jobs,  boost  growth  and 
enhance competitiveness. It also plays a key role in completing and strengthening the Single 
Market  and  reducing  fragmentation  across  Member  States.  This  is  why  the  Commission 
announced in the Digital Single Market11 and Single Market12 strategies that Europe needs to 
do more to guarantee that IPR enforcement also becomes a reality – in the digital environment 
–  supporting  the  'follow  the  money'  approach  and  paying  special  attention  to  small-  and 
medium sized enterprises (SMEs).   
Following up on recent initiatives to improve the copyright framework13, the Commission is 
presenting  a comprehensive package of measures to further improve the application and 
enforcement of IPRs within the EU Member States, at our borders and internationally14. 
The measures contained in this package are set out in this Communication, as well as in the 
following documents:  
  a Communication providing guidance on how to apply the Directive on the enforcement 
of    Intellectual  Property  Rights  (IPRED)15,  accompanied  by  a  Staff  Working  Document 
with an evaluation of IPRED; 

  a Communication on Standards Essential Patents; 
  a  Staff  Working  Document  on  the  evaluation  of  the  Memorandum  of  Understanding  on 

the sale of counterfeit goods via the internet. 

 https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/546223/OCI-tracker-6th-wave-
March-May-2016.pdf). 
8  The  recent  EUIPO  analysis  (see  footnote  6)  estimates  that  direct  and  indirect  job  losses  in  the  nine  sectors 
exceed 786 000. Government revenue lost in the same nine sectors amounts to EUR 14.4 billion. 
9 UNODC, The Illicit Trafficking of Counterfeit Goods and Transnational Organized Crime, 2014, available at: 
https://www.unodc.org/documents/counterfeit/FocusSheet/Counterfeit_focussheet_EN_HIRES.pdf 
Europol-EUIPO, Situation report on counterfeiting in the EU, 2015, available at:  
https://euipo.europa.eu/ohimportal/documents/11370/80606/2015+Situation+Report+on+Counterfeiting+in+the
+EU and UNICRI, Illicit pesticides, Organized crime and supply chain integrity, 2016, available at: 
http://www.unicri.it/in_focus/files/The_problem_of_illicit_pesticides_low_res1.pdf 
10  Towards  a  renewed  consensus  on  the  enforcement  of  Intellectual  Property  Rights:  An  EU  Action  Plan, 
COM(2014)392,  1  July  2014.  On  the  basis  of  this  Action  Plan,  the  European  Parliament  called  on  the 
Commission  to  come  up  with  a  detailed  assessment  of  the  current  legal  framework,  see  resolution  of  9  June 
2015. 
11 Commission Communication, A Digital Single Market Strategy for Europe, COM/2015/0192, 6 May 2015. 
12  Commission  Communication,  Upgrading  the  Single  Market:  more  opportunities  for  people  and  businesses, 
COM/2015/0550, 28 October 2015. 
13 See in particular Promoting a fair, efficient and competitive European copyright-based economy in the Digital 
Single Market, COM(2016)592, 14 September 2016 and Proposal for a Directive of the European Parliament and 
of the Council on Copyright in the Digital Single Market of 14 September 2017. 
14 The Annex provides an overview of the main actions. 
15 Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of 
intellectual property rights, (OJ L 157, 30.4.2004, p. 45). 

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This Communication provides a framework for all of these actions on IP enforcement, and is 
composed of four main sections which set out:  
1) measures  to  make  it  easier  for  IP  stakeholders  to  benefit  from  a  homogeneous,  fair  and 
effective judicial enforcement system in the EU. Together with the IPRED guidance, this 
includes  actions  and  recommendations 
judicial  capacity  and 
predictability in the EU; 

to  further  enhance 

2) actions to support industry-led initiatives to combat IP infringements, such as voluntary 
agreements  with  intermediaries  and  steps  to  better  protect  supply  chains  against 
counterfeiting; 

3) initiatives  to  strengthen  the  capacity  of  custom  and  other  authorities  to  enforce  IP 

rights; 

4) measures to strengthen efforts to fight IP infringements at a global scale, by promoting 

best practices and stepping up co-operation with third countries.  

Whilst there is a clear need for stronger action against IP infringements, at the same time, the 
EU  should  have  policies  to  ensure  that  respect  of  IPRs  is  reconciled  with  the  need  for  a 
smooth roll-out of new and innovative technologies. This is of particular importance when 
such technologies are incorporated into standards. In today’s fast-changing and interconnected 
world,  widespread  standards  based  on  IP-protected  technologies  —  known  as  standard-
essential patents (SEPs) — are necessary for interoperability, and in particular for an effective 
roll-out of the Internet of Things. A balanced, efficient and sustainable framework for SEPs is 
therefore essential to guarantee fair access to standardised technologies, whilst ensuring that 
patent-holders  are  rewarded  for  their  investments  in  R&D  and  standardisation  activities  and 
are thus incentivised to offer their best technologies for inclusion in standards. 
That is why a separate Communication sets out a framework for SEPs. It offers guidance 
and recommendations on how to make the declaration system more transparent and efficient, 
clarifies some core principles regarding fair, reasonable and non-discriminatory practices (the 
‘FRAND’  approach),  and  offers  guidance  on  how  to  secure  effective  enforcement  whilst 
making abusive litigation less likely. More clarity on these points will help ensure that the EU 
can  be  a  leader  in  global  technological  innovation  while  facilitating  an  effective  roll-out  of 
new technologies in the EU such as the Internet of Things or 5G, which are the foundation of 
the Digital Single Market. 

II.  TOWARDS A MORE EFFICIENT AND PREDICTABLE JUDICIAL 

ENFORCEMENT REGIME IN THE EU 

In line with the better regulation guidelines16, the Commission has finalised a comprehensive 
performance evaluation of IPRED. The results show that the directive has led to the creation 
of a common legal framework, where the same set of tools is applied in civil courts across the 
EU, thereby generally ensuring a high level of protection in the internal market. The Directive 
has also given rise to pan-European enforcement strategies of companies and has encouraged 
judges and legal professionals to exchange litigation experiences. Furthermore, the evaluation 
showed that IPRED has been cost-efficient, coherent with other EU interventions with similar 
objectives  and  creating  added  value  at  EU  level.  The  evaluation  therefore  concluded  that 
IPRED is still fit for purpose. 

16  The  better  regulation  guidelines  set  out  the  principles  for  the  European  Commission  when  managing  and 
evaluating existing legislation. See https://ec.europa.eu/info/better-regulation-guidelines-and-toolbox_en.  

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However,  the  evaluation  also  found  that  there  are  differences  in  the  way  certain  IPRED 
provisions  (for  instance  on  injunctions,  damages  and  legal  costs)  are  implemented  and 
applied in practice. These differences often stem from uncertainties and diverging views as 
to how the provisions should be understood, especially because of the challenges linked to the 
new digital environment. They may also be due to the minimum harmonisation character of 
IPRED. Probably most importantly, divergences stem from the fact that IPRED works against 
the background of very diverse national civil enforcement frameworks and judicial traditions. 
As a consequence, depending  on where  judicial proceedings are initiated, outcomes  may be 
very different, both in terms of substance as in terms of efficiency or effectiveness. This may 
hamper  predictability  and  can  render  enforcement  difficult,  in  particular  in  a  cross-border 
context.  
The  results  of  the  public  consultation  on  the  evaluation  of  IPRED17  confirm  these  findings. 
While most stakeholders felt that the existing rules have indeed helped protect IP and prevent 
IP  infringements,  many  asked  for  more  clarity  on  the  way  IPRED  should  be  applied  in 
practice.  Rightholders  and  intermediaries  in  particular  considered  that  IPRED's  measures, 
procedures  and  remedies  were  not  being  applied  consistently  across  the  Member  States, 
resulting  in  different  levels  of  protection  within  the  EU.  While  respect  of  IP  is  itself  a 
fundamental  right18,  citizens,  for  their  part,  raised  concerns  about  the  respect  for  their 
fundamental rights in IPR enforcement procedures.  

Guidance on IPRED 

To ensure a more consistent and effective application of IPRED, the Commission issues, by 
way of a separate Communication, guidance on the interpretation and application of the 
measures,  procedures  and  remedies  provided  for  by  IPRED19.  Drawing  on  Court  of 
Justice  case-law  and  available  best  practice,  the  guidance  document  sets  out  the 
Commission’s views on those IPRED provisions which have caused interpretation problems. 
Reflecting  the  results  of  the  evaluation,  including  the  public  consultation,  it  addresses  key 
aspects of IPRED, notably: 
 

its scope;  
the meaning of the requirement that those measures, procedures and remedies must inter 
alia be ‘fair and equitable’;  
the  rules  on  evidence,  on  the  right  of  information,  on  the  right  to  provisional  and 
precautionary measures and on injunctions;  

 

 

reimbursement of legal costs.  

  compensation for the prejudice suffered (damages); and  
 
The document also provides guidance on how to apply measures set out in IPRED in a way 
that ensures striking a fair balance between the different fundamental rights which may be at 
issue in IP litigation while avoiding disproportionate outcomes and abusive litigation. 
IP  litigation,  in  particular  in  the  digital  age,  might  take  place  simultaneously  in  several 
Member  States.  For  instance,  copyright  holders  seeking  to  fight  illegal  online  content  may 
have  to  lodge  claims  in  several  Member  States  in  relation  to  the  same  infringement,  at  the 
same  time.  Applying  for  the  same  remedy  for  the  same  infringement  in  more  than  one 

results  of 

the  public 

17  The 
http://ec.europa.eu/growth/content/have-your-say-enforcement-intellectual-property-rights-0_de  
18 See Article 17(2) of the Charter of Fundamental Rights. 
19  Commission  Communication,  Guidance  on  certain  aspects  of  Directive  2004/48/EC  of  the  European 
Parliament and of the Council on the enforcement of intellectual property rights, COM(2017) 708. 

the  Commission  website 

available  on 

consultation 

are 

at: 

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jurisdiction generally involves significant costs and lengthy procedures however, in particular 
where  no  uniform  EU  IP  title  exists  and  where,  because  of  differences  in  substantive  law, 
exceptions and limitations may be applied in a different manner across Member States. While 
it  does  not  and  cannot  address  all  the  challenges  that  exist  in  this  regard20,  by  helping  to 
achieve  a  more  coherent  interpretation  and  application  of  IPRED,  the  guidance  on  IPRED 
should make it easier for rightholders to engage in cross-border litigation. 
The  guidance  is  without  prejudice  to  enforcement  action  the  Commission  could  consider 
taking under Article 258 TFEU, and which will be in line with the interpretation set out in the 
guidance document. 
The roles and responsibilities of intermediaries, in particular online intermediaries, emerged 
as  an important concern for stakeholders in  both the evaluation and the public consultation. 
As the Guidance clarifies, the possibility to issue an injunction against an intermediary on the 
basis of IPRED does not depend on the intermediary's liability for the (alleged) infringement 
in question.21 In fact, the e-Commerce Directive22 governs the conditions under which certain 
online intermediaries are exempt from liability. Whilst in its 2016 Communication on online 
platforms23 the Commission considered that this framework provided by this latter Directive 
is  still  fit  for  purpose,  the  Commission  recently  issued  concrete  guidance24  designed  to 
combine the swift and effective detection and removal of illegal content online, including IP-
infringing content, with the necessary legal safeguards, for instance through so-called notice-
and-action procedures. Its proposal for a Directive on copyright in the Digital Single Market 
also  provides  for  certain  specific  tools  and  mechanisms  to  achieve  a  well-functioning 
marketplace for copyright and proposed, in particular, appropriate measures taken by certain 
online  service  providers  to  prevent  in  cooperation  with  rightholders  the  availability  of 
copyright protected content without those rightholders' consent. 

Building  a  stronger  ‘IP  enforcement  knowledge  community’: 
enforcement in the EU 

improving 

judicial 

The  evaluation  has  shown  that  many  rightholders  complained  of  difficulties  with  regard  to 
access  to  justice,  lengthy  and  costly  procedures  and  uncertain  outcomes.  The  evaluation 
further  revealed  a  perceived  lack  of  transparency  and  predictability  about  the  way  judicial 
proceedings  are  managed  and  the  (likely)  outcomes  thereof.  Overall  it  appears  that  factors 
such as differences in national civil law traditions and judicial practices are still holding back 
the development of a predictable and consistent system for enforcing IPRs in the EU.  
In  this  context,  in  addition  to  providing  the  IPRED  guidance,  the  Commission  calls  on 
Member  States  to  step  up  their  efforts  to  provide  for  effective  and  predictable  civil 
redress against IP infringements in the EU in accordance with IPRED and will support those 
efforts. In fact, more transparency and predictability would be of great benefit, in particular to 

20 As explained in Recital 11 of IPRED, that Directive does not aim  to establish harmonised rules for judicial 
cooperation,  jurisdiction,  the  recognition  and  enforcement  of  decisions  in  civil or  commercial  matters,  or  deal 
with applicable law, there being other instruments of EU law governing such matters in general terms which are 
in principle equally applicable to IP.  
21 See section IV.1 of the Guidance. 
22 Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects 
of information society services, in particular electronic commerce, in the Internal Market (OJ L 178, 17.7.2000, 
p. 1).  
23 Commission Communication, Online Platforms and the Digital Single Market Opportunities and Challenges 
for Europe, COM(2016)288 of 25 May 2016. 
24 Commission Communication, Tackling Illegal Content Online – Towards an enhanced responsibility of online 
platforms, COM(2017) 555 of 28 September 2017. 

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SMEs. It would facilitate their access to justice and help promote the roll-out of affordable IP 
litigation insurance schemes25.  
As a first step, the Commission will work closely with the Member States and stakeholders to 
seek  to  complement  the  guidance  document  referred  to  above,  where  necessary  and 
appropriate, with further, more targeted guidelines to support a homogeneous and effective 
enforcement  of  IPRs  in  the  EU.  To  this  end  it  will  identify,  together  with  national  experts, 
including  national  judges,  and  other  stakeholders,  some  concrete  issues  and  problem  areas 
where  further  specific  guidelines,  based  on  best  practice  experiences,  would  be  useful.  A 
concrete  case  in  this  respect  could  be  the  calculation  of  damages  and  evidence  needed  to 
compensate for the harm caused by IPR infringements.  
The Commission intends to publish all guidance on IP enforcement online, inter alia, via the 
Your Europe portal26 so that practical information about judicial enforcement of IP rights in 
the EU is available not only to judges and legal practitioners, but to all stakeholders. 
Further,  as  the  IPRED  evaluation  has  shown,  having  judges  specialised  in  IPR  and  in 
particular  in  IPR  enforcement  is  very  important  for  the  effective  and  efficient  use  of 
IPRED's  measures,  procedures  and  remedies.  Such  specialisation  can  bring  considerable 
advantages, especially faster, more efficient and more consistent decisions leading to greater 
legal  certainty.  The  Commission  therefore  calls  on  Member  States  to  increase  such 
specialisation.  
Another  element  to  enforce  IPRs  more  effectively  and  consistently  in  the  EU  is  the 
availability of judicial training and the development of best practices. To support Member 
States’ efforts in this area, the Commission will further step up its work with the Observatory 
to  develop  a  comprehensive  curriculum  of  seminars  and  training  sessions  for  judges.  This 
should  encourage  networking  and  learning  practices  among  judges  dealing  with  IPR 
infringements. In this context, three dedicated seminars are foreseen for 2018. 
Finally,  transparency about judgments on IPR enforcement  is an essential  pre-requisite for 
knowledge exchanges across the single market, more predictability and a cross-border debate 
among  IP  practitioners.  To  date,  however,  only  a  few  Member  States  have  published  IP-
related case law on dedicated websites, and rules on availability and publication differ rather 
widely. The Commission therefore calls on Member States to systematically publish judicial 
decisions  in  proceedings  relating  to  IPR  infringements,  at  least  from  appeal  courts  and 
higher27. For its part the Commission will, together with the EUIPO and the Observatory, step 
up  work  on  the  case  law  collection  database  launched  by  the  EUIPO  to  make  it  as 
comprehensive and as user-friendly as possible. 
Apart  from  more  effective  judicial  enforcement  systems,  the  development  of  further 
alternative  dispute  resolution  (ADR)  tools  should  also  be  considered.  Using  ADR  for 
mediation and arbitration can serve as an alternative means of IP enforcement. Whilst it is still 
rarely  used  to  settle  IP  claims,  ADR  solutions  have  advantages  (for  example,  cross-border 
issues can be resolved more easily, and ADR can be faster and cheaper than court litigation). 
Together  with  the  EUIPO,  the  Commission  is  currently  mapping  existing  ADR  tools  and 

25 As announced in its Start-up and Scale-up Initiative, (Putting intellectual property at the service of SMEs to 
foster  innovation  and  growth,  SWD(2016)  373  of  22  November  2016),  the  Commission  is  taking  action  to 
stimulate the roll-out of such IP insurance schemes in Europe, in particular to help SMEs. 
26 www.youreurope.be  
27 This should be done in compliance with legislation on the protection of personal data. As a separate matter, 
Member  States  must  also  comply  with  Article  15  of  IPRED,  which  enables  judicial  authorities  to  order  the 
publication of judicial decisions, at the request of applicants and at the expense of infringers. 

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analysing the merits of establishing a mediation centre at the EUIPO to cover trade mark and 
design issues. It also intends to work with the future Unified Patent Court on the development 
of mediation and arbitration in patent cases. This should help roll out an EU IP mediation and 
arbitration network, as announced in the Start-up and Scale-up Initiative28. 

With  the  view  to  further  improving  the  system  of  judicial  enforcement  in  the  EU,  the 
Commission: 

-  provides  guidance  on how  to  interpret  and  apply  key  provisions  of  the  IPR  enforcement 
Directive (IPRED); 

-  will  work  with  Member  States'  national  experts  and  judges  on  further,  more  targeted 
guidelines, to give more detailed and practical guidance on specific IPRED issues, based on 
best practices experience;  

- will bring the above-mentioned guidelines and best practices online, inter alia via the Your 
Europe portal; 

-  calls  on  Member  States  to  encourage  the  specialisation  of  judges  for  IP  and  IP 
enforcement-related  matters,  and  to  systematically  publish  judgments  rendered  in  IP 
enforcement cases; 

- will, together with the EUIPO, take further action to facilitate the wider use of alternative 
dispute  resolution  (ADR)  to  settle  IP  disputes,  including  mapping  existing  ADR  tools  and 
analysing the merits of establishing a mediation centre at the EUIPO. 

III. 

STEPPING UP INDUSTRY-LED EFFORTS TO PREVENT AND COMBAT 
IP INFRINGEMENTS 

The fight against IP infringements should be a joint effort involving all actors, both public and 
private, and make use not only of judicial enforcement but of all possible tools. For a number 
of  years,  the  Commission  has  been  working  with  the  industry  to  support  and  promote 
industry-led actions against IP infringements. The idea is to encourage  due diligence by all 
parties  potentially  involved  in  the  development  of  and  transactions  related  to  products  or 
content  that  are  IPR-infringing,  including  suppliers,  advertising  agencies,  payment  service 
providers as well as the rightholders themselves. Despite significant progress, more can and 
should be done to stop the proliferation of IP-infringing goods and practices. 

Fully exploiting the potential of voluntary agreements  

The Commission encourages more stakeholder dialogues to promote an effective cooperation 
between  industry  partners  in  the  fight  against  IP  infringments  and  spread  best  industry 
practice. A first Memorandum of Understanding ('MoU') was concluded between rightholders 
and internet platforms in 2011 and updated in 201629. It sets out a cooperative approach for 
fighting the sale of counterfeit goods. Since then, two further developments can be noted: 
Firstly,  in  the  context  of  this  first  MoU  on  counterfeiting,  key  performance  indicators 
('KPIs)  have  been  introduced  to  assess  the  results  of  the  voluntary  agreement  and  identify 
possible areas for further improvement. The results of a first monitoring cycle on the basis of 
these  KPIs  show  that  the  MoU  is  proving  effective  and  has  already  yielded  significant 

28 See footnote 26. 
29 Memorandum of Understanding on the sale of counterfeit goods via the Internet of 21 June 2016, available at 
http://ec.europa.eu/DocsRoom/documents/18023/attachments/1/translations.  The  MoU  applies  to  trademarks, 
designs and copyright. 

7 

 
 
                                                            
results. They show that voluntary cooperation can substantially contribute to curbing online 
counterfeiting  and  can  deliver  efficient  solutions.  Since  the  MoU  came  into  effect,  a 
substantial  amount  of  offers  for  counterfeit  products  have  been  removed  from  online 
platforms,  mainly  as  a  result  of  more  pro-active  and  preventive  measures.  However,  given 
that IP infringing goods increasingly find their way onto the single market, the Commission 
encourages all signatories and new participants to intensify their efforts30.  
Secondly,  under  the  auspices  of  the  Commission,  stakeholders  are  finalising  their  work 
towards the conclusion of a new MoU aimed at withholding advertising on IP infringing 
websites.  Revenues  from  advertising  are  an important  income  stream  for  such  sites  and  the 
measures to be agreed should help cut off this important source of support for IP infringers. 
The presence of ads for household brands and well known payment services on IP infringing 
sites  can  lead  consumers  to  believe  that  the  site  they  are  accessing  is  providing  access  to 
content,  goods,  or  services  in  a  legal  manner,  when  in  fact  it  is  not.  This  can  confuse 
consumers, eroding their confidence, and thereby damaging brand equity. 
Work  is  also  underway  on  an  MoU  for  the  transport  and  shipping  industries.  It  aims  to 
prevent the services of these companies from beeing used by commercial-scale counterfeiters 
to  channel  fake  goods  into  the  EU.  A  further  MoU  in  preparation  is  expected  to  cover 
providers of payment services, which are often vital for IP-infringing online offers. 
The  Commission  supports  the  further  development  of  these  voluntary  agreements,  in 
particular in an online environment, and will seek to ensure that all signatories act diligently 
and in  full  respect of EU law generally, and of Articles 101 and 102 TFEU in  particular. It 
will  also  seek  to  ensure  that  a  proper  balance  is  found  between  the  various  interests  of  the 
parties involved and that consumers rights are duly respected. The Commission will promote 
as well a wide participation to such agreements of all sectors and industries. 
The  Commission  considers  that  the  monitoring  of  such  MoUs  should  be  based  on  key 
performance indicators. It will report regularly on the effectiveness of these agreements, with 
a view to distilling best practice; identifying areas for future improvement and assessing the 
need for legislative measures at EU level. 

Protecting supply chains against IP infringement threats 

Another  strand  of  work  involving  the  Commission,  industry  and  other  partners  seeks  to 
protect supply chains against threats of counterfeiting and other IP infringements. Here,  too, 
challenges  are  multiplying.  A  workshop  on  due  diligence  and  supply  chain  integrity  for  IP 
protection  in  201531  concluded  that  companies  are  increasingly  confronted  with  cases  of 
counterfeit products (such as, for instance, counterfeit electronic parts) infiltrating their supply 
chains. This is largely due to the fact that supply chains are increasingly complex, making it 
often  difficult  for  companies  —  SMEs  in  particular  —  to  monitor  their  suppliers  and  sub-
suppliers.  Furthermore,  the  emergence  of  new  technologies  and  the  internet  has  helped 
infringers  improve  their  counterfeiting  techniques  and  infiltrate  legitimate  supply  chains. 
There  are  best  practices  for  supply  chain  transparency  (risk  management,  corporate  social 
responsibility). However, they are not used routinely to detect and combat IP infringements. 

30 More details on the results of the first monitoring cycle of the MoU on counterfeiting — including analysis 
using  the  key  performance  indicators  and  the  results  of  a  stakeholder  survey  —  can  be  found  in  the  Staff 
Working Document overview of the functioning of the Memorandum of Understanding on the sale of counterfeit 
goods via the internet, SWD(2017) 430 attached to this Communication. 
31 The video of the workshop is available on the Commission website at: 
 http://ec.europa.eu/growth/industry/intellectual-property/enforcement/index_en.htm. 

8 

 
 
                                                            
A lack of due diligence weakens the security of the supply chain and allows in counterfeits, 
which are harmful to businesses and expose citizens to risks. 
In the view of the Commission there is an urgent need to further harness supply chains against 
counterfeits. This can be done by testing out new tools and helping to build and expand best 
practices.  
Traceability of goods is a cornerstone of supply chain security, consumer safety and quality of 
products.  The  Commission  will  consequently  seek  to  enhance  the  cooperation  between 
rightholders and key actors such as standard organisations and security solutions providers in 
order to facilitate the dissemination of traceability technologies32 and support the emergence 
of  new  traceability  and  authentication  systems  such  as  blockchain.  By  recording  assets, 
transactions  and  participants,  this  shared  digital  ledger  provides  valuable  information  about 
the origin and history of products, so that they can be tracked and authenticated more easily. 
Blockchain-based solutions may therefore make it possible to detect rapidly counterfeit parts 
or  products  that  have  entered  legitimate  supply  chains,  as  well  as  a  possible  diversion  of 
goods  to  illicit  marketplaces33.  As  part  of  its  project  #Blockchain4EU:  Blockchain  for 
Industrial  Transformations,  the  Commission  is  analysing  how  blockchain  can  be  used  to 
strengthen  the  transparency  of  supply  chains  and  better  protect  IPRs.  Together  with  the 
Observatory,  the  Commission  will  further  map  and  test  (in  particular  through  Blockathon) 
different  possible  uses  of  blockchain  in  the  fight  against  counterfeits  and  identify  potential 
legal and economic barriers to its take-up34. 
In addition, there is also scope for more awareness-raising and more widespread best practice. 
Industries  should  be  made  aware  of  the  need  to  protect  their  supply  chains  and  should  be 
encouraged  to  take  action  for  better  protection.  The  further  inclusion  of  IP  protection  in 
accreditation  processes  can  bring  a  helpful  tool  in  this  context.  For  instance,  on 
10 May 2017,  a  new  ISO  standard  on  sustainable  procurement  was  adopted  (ISO  20400) 
containing for the first time an explicit reference to measures to combat IP infringement. The 
Commission will now seek to further promote this standard through information sessions to 
companies35 or larger IP enforcement events36.  
Moreover, the Commisison will also look more closely at how compliance with IP protection 
standards could become part of the process for acquiring the status of ‘authorised economic 
operator  (AEO)’37  in  the  future.  The  AEO  concept  is  based  on  a  World  Customs 
Organization  (WCO)  customs-to-business  partnership.  The  AEO  is  granted  by  the  customs 
authorities and gives economic operators certain benefits in customs procedures. It is open to 
all supply chain actors who meet certain quality criteria set out in EU customs rules and work 
in  close  cooperation  with  customs  authorities  to  ensure  the  security  and  integrity  of  supply 
chains.  The  fight  against  counterfeiting  could  further  gain  prominence  here.  In  order  to 

32 The Joint Research Centre of the European Commission carried out an extensive mapping of authentication 
technologies and track and trace systems, which was published in 2016, available at: 
 http://publications.jrc.ec.europa.eu/repository/bitstream/JRC104204/kjna28400enn.pdf  
33  Provided,  of  course,  that  blockchain-based  solutions  comply  with  applicable  law,  notably  as  regards  the 
protection of personal data.  
34  The  Commission  will  also  launch  an  ‘EU  Blockchain  Observatory  and  Forum’,  together  with  the  European 
Parliament. 
35 For instance, with the support of IPR Helpdesks. 
36 ISO 20400 was addressed during the IP Enforcement Summit held in Berlin on 23 June 2017. 
37 
operator-aeo_en  

https://ec.europa.eu/taxation_customs/general-information-customs/customs-security/authorised-economic-

9 

 
 
                                                            
increase  supply  chain  security,  economic  operators  are  encouraged  to  choose  trusthworthy 
partners who have efficient compliance schemes, such as AEO, in place. 
Finally,  specific  attention  should  be  paid  to  the  situation  of  SMEs,  who  often  have  very 
limited  means  to  harness  their  supply  chains.  The  EUIPO  is  launching  a  specific  study  into 
this, with the view to distilling best practice and offering concrete solutions. 

The  Commission  calls  on  industry  to  undertake  the  necessary  due  diligence  steps  to 
combat IP infringements. To support the industry in these efforts and to promote best 
practice, it will: 

- further engage with stakeholders to improve and expand voluntary agreements to fight 
IP  infringements.  It  will  work  on  promoting  dedicated  MoUs  involving  rightholders, 
internet platforms, advertising companies, shippers and payment service providers; 

- continue to monitor the functioning and effectiveness of such MoUs and report on their 
results; 

-  further  promote  due  diligence  in  supply  chains,  explore  the  potential  of  new 
technologies  such  as  blockchain  and  encourage  the  use  of  existing  accreditation 
processes to introduce IP compliance schemes. 

IV. 

FIGHTING IP INFRINGMENTS THROUGH ENHANCED 
ADMINISTRATIVE COOPERATION  

There  is  now  a  wealth  of  information  on  the  value  and  impact  of  counterfeit  and  pirated 
goods38, on the origin of criminal organisations and the routes they use to channel these goods 
into the EU39. Thanks to a huge data collection effort40, the worst affected sectors have now 
been identified, the routes are known, the evidence is there. It is time, therefore to join forces 
within the EU and to step up the fight against IP infringements at its borders and beyond. 
To  improve  respect  for  IPRs  within  the  EU,  the  Commission  will  seek  to  enhance 
cooperation  between  all  the  relevant  authorities.  First,  it will  explore  how  economic  and 
trade  inspection  bodies,  along  with  consumer  protection  authorities,  can  be  more  closely 
involved in combating counterfeiting and piracy. In some Member States this is already the 
case; in others it is not. Based on existing best practices in some areas and Member States, the 
Commission  will  discuss  with  Member  States  how  to  secure  the  proper  involvement  of  all 
relevant  authorities.  The  Commission  will  for  instance  continue  to  stimulate  the  sharing  of 
best practices between Member States in the agri-food sector for the control and enforcement 
in  particular  of  geographical  indication  (GI)  rights,  including  the  continuation  of  the  audit 
programme of Member States' control structures. 

38 See Europol/EUIPO, Situation Report on Counterfeiting and Piracy in the European Union, 2017, at: 
 https://euipo.europa.eu/tunnel-
web/secure/webdav/guest/document_library/observatory/documents/reports/Situation%20Report%20EUIPO-
Europol_en.pdf. 
39 See OECD/EUIPO, Mapping the Real Routes of Trade in Fake Goods, of June 2017, available at: 
 https://euipo.europa.eu/tunnel-
web/secure/webdav/guest/document_library/observatory/documents/reports/Mapping_the_Real_Routes_of_Trad
e_in_Fake_Goods_en.pdf.  
40  More  publications  on  specific  issues  regarding  IP  and  infringements  are  available  at  the  homepage  of  the 
Observatory: https://euipo.europa.eu/ohimportal/en/web/observatory/observatory-publications. 

10 

 
 
                                                            
Further,  together  with  the  EUIPO  and  Europol,  the  Commission  will  map  the  various 
databases used in the fight against counterfeiting to identify  data gaps and possible ways of 
improving data-sharing among the relevant authorities. 
Together with the EUIPO, and based on the evidence and data collected, the Commission will 
also seek to work with Member States to raise further public awareness about the role of IP 
and the negative effects of IPR infringements. 
To fight counterfeiting and piracy at the Union's borders, the Commission will continue 
assisting Member States in customs enforcement. It is currently assessing how the Customs 
Action  Plan  to  combat  IP  infringements  has  performed  over  the  2013-2017  period41.  It  will 
report  on  this  still  in  2017  and  take  the  necessary  next  steps,  focusing  on  the  following 
priorities: 
  ensuring homogeneous implementation of IPR border enforcement legislation throughout 

the EU; 

  strengthening  customs  cooperation  and  exchange  of  information  with  police  and  other 

enforcement authorities; 

  developing risk management tools for IPR enforcement. 
Furthermore, the Commission recalls the obligations on Member States to transpose the new 
EU rules laid down in the Trade Marks Directive, including the regime for public authorities. 
These rules serve inter alia to stop the flow of counterfeit goods, including those in transit42. 
Counterfeited products usually do not comply with EU product legislation and may constitute 
a safety  risk for consumers. As this Communication  focuses on a better enforcement  of EU 
IPR  legislation,  the  enforcement  of  other  EU  product  legislation  will  be  addressed  in  the 
forthcoming 'Goods Package', as announced in the Single Market Strategy. 

The Commission will: 

- together with the EUIPO, ensure that relevant enforcement authorities in the EU have the 
tools  to  co-operate  in  the  fight  against  counterfeiting  and  piracy  including  by  means  of 
better market surveillance; 

-  together  with  the  EUIPO,  step  up  efforts  to  make  the  public  more  aware  about  risks 
related to IP infringements;  

-  offer  more  targeted  assistance  to national  custom  authorities,  based  on  the  results  of  the 
current  Customs  Action  Plan,  and  work  with  the  Council  towards  a  new  Customs  Action 
Plan in 2018. 

V. 

FIGHTING IP INFRINGEMENTS WORLDWIDE  

Counterfeiting  and  piracy  are  mostly  global  problems  requiring  global  responses.  Measures 
taken within the EU should be accompanied by international efforts to prevent IP violations 
throughout global supply chains.  
The  Commission  promotes  the  EU  approach  to  IPR  enforcement  worldwide:  bilaterally,  in 
trade  agreements  and  IPR  dialogues  with  key  trading  partners;  and  multilaterally,  in 
international organisations such as the World Intellectual Property Organisation (WIPO), the 

41 Council Resolution on the EU Customs Action Plan to combat IPR infringements, (OJ C 80, 19.3.2013, p. 1). 
42  See  Directive  (EU)  2015/2436  of  the  European  Parliament  and  of  the  Council  of  16 December 2015  to 
approximate the laws of Member States relating to trade marks (OJ L 336, 23.12.2015, p. 1). 

11 

 
 
                                                            
World Trade Organisation (WTO) TRIPS Council and the OECD, as well as relevant bodies 
such  as  ICANN43.  The  objective  is  to  strengthen  and  standardise  IP  enforcement 
internationally and raise awareness of the damage caused by counterfeiting and piracy.   
The  Commission,  in  close  cooperation  with  the  EUIPO,  is  launching  three  IP  technical 
cooperation  programmes  ("IP  Key")  with  China,  South  East  Asia  and  Latin  America 
respectively.  It  is  doing  this  based  on  the  positive  experience  of  previous  cooperation 
programmes with China and the ASEAN region. The budget of these three programmes will 
total EUR 20 million between 2017 and 2020. The programmes will support the development 
of  an  effective  system  for  IP  protection  in  the  participating  countries,  based  on  EU  good 
practices, helping EU businesses protect their IP rights in these markets.  
As part of the Strategy for the Protection and Enforcement  of Intellectual Property in  Third 
Countries,44  the  Commission  will  publish  an  updated  report  on  the  protection  and 
enforcement  of  IPRs  in  third  countries.  The  Report  will  contain  a  list  of  new  priority 
countries. The Commission will intensify its activities in the priority countries and focus its 
resources  on  the  identified  areas  of  concern,  including  free  trade  zones  and  geographical 
indications.  
The Commission, in collaboration with the EUIPO, will set up an IP markets watch-list. The 
watch-list will identify online and physical markets situated outside the EU that are reported 
to  engage  in,  or  facilitate,  substantial  IPR  infringements,  and  in  particular  piracy  and 
counterfeiting, in relation to EU consumers. The final output of this exercise will be a list of 
the  most  problematic  markets  with  a  description  of  their  main  features.  The  necessary 
information and safeguards as regards the content and purpose of the list will be provided by 
the  Commission.  The  Commission  will  also  monitor  the  measures  and  actions  taken  by  the 
local authorities in relation to the listed markets as well as the measures and actions taken by 
the operators and market owners to curb IP infringements.  
In  this  context,  the  Commission  will  launch  a  public  consultation  to  collect  information  on 
these markets. The data verified with the help of the Observatory will be used in the selection 
of the markets to be placed on the list. The first IP Markets Watch-List is to be published in 
the second half of 2018 and will be updated regularly. 
The Commission will also continue to promote the use of online information on IP protection, 
including  the  anti-counterfeiting  rapid  intelligence  system  database  (ACRIS)  which  gathers 
information on IP infringement cases affecting EU companies in countries outside the EU. To 
make the information online more accessible and user-friendly, the Commission intends to set 
up a portal bringing together the access points to its IP-related websites and databases.   

To step up the fight against IP infringements in non-EU countries, the Commission will: 

- publish in the first quarter of 2018 a new report on the protection and enforcement of 
intellectual  property  rights  in  third  countries,  introducing  new  areas  (i.e.  free  trade 
zones, geographical indications);  

-  set  up  an  IP  markets  watch-list  in  the  second  half  of  2018,  identifying  online  and 
physical markets that engage in or facilitate substantial IPR infringements;  

-  implement  on  the  basis  of  annual  work  plans  the  technical  cooperation  programmes 
(the IP Key programmes) with China, South-East Asia and Latin America.  

43 The Internet Corporation for Assigned Names and Numbers. 
44https://euipo.europa.eu/ohimportal/documents/11370/0/Report+on+the+protection+and+enforcement+of+intell
ectual+property+rights+in+third+countries  

12 

 
 
                                                            
VI.  CONCLUSION 

This Communication sets out a comprehensive set of measures and actions aimed at ensuring 
a coordinated and effective approach across EU policies to further improve the fight against 
IP  infringements.  To  ensure  a  maximum  visibility,  the  Commission  is  working  with  the 
EUIPO to make information on all measures and actions available via a single web portal. 
The magnitude of counterfeiting and piracy and their impact on our society require effective 
enforcement  responses,  involving  fast  and  coordinated  intervention  from  a  multitude  of 
players, both public and private, acting at every level, from local to global. 
With  this  in  mind,  the  Commission  encourages  all  parties  to  follow  up  on  the  guidance, 
recommendations  and  actions  outlined  in  this  Communication.  It  will  monitor  the  progress 
made and, on this basis, assess the need for further steps.  

13 

 
 
 
 
Overview of main actions 

ACTION 

ACTORS 

TIMELINE 

1. 

TOWARDS  A  MORE  EFFICIENT  AND  PREDICTABLE  JUDICIAL 
ENFORCEMENT REGIME IN THE EU 

Guidance  on  how  to  interpret  and  apply 
key  provisions  of  the  IPR  Enforcement 
Directive (IPRED). 

Commission 

done 

Working  with  national  experts  and  judges 
on  further,  more  targeted  guidelines  based 
on best practice. 

Commission/Member 
States/Observatory 

by 2019 

Bring  above  guidelines  and  best  practices 
online, i.a. via the Your Europe portal. 

Commission/Observatory 

by 2019 

Encourage: 

Member States 

- 

- the specialisation of judges for IP and IP 
enforcement-related matters; 

- the systematic publication of judgements 
in IP enforcement cases. 

Facilitate  the  wider  use  of  alternative 
dispute  resolution  (ADR)  to  settle  IP 
disputes,  including  mapping  of  existing 
ADR  tools  and  analysing  the  merits  of 
establishing  a  mediation  centre  at  the 
EUIPO. 

Commission/EUIPO 

by 2019 

2. 

STEPPING  UP  INDUSTRY-LED  EFFORTS  TO  PREVENT  AND  COMBAT  IP 
INFRINGEMENTS 

Improve and expand voluntary agreements 
to  fight  IP  infringements,  in  particular  by 
dedicated  Memoranda  of  Understanding 
(MoUs)  involving  rightholders,  internet 
platforms,  advertising  companies,  shippers 
and payment service providers. 

these  MoUs;  monitor 

Promote 
their 
functioning and effectiveness and report on 
their results. 

Promote  due  diligence  in  supply  chains  to 
combat  IP 
the 
potential  of  new  technologies  such  as 
the  use  of 
blockchain  and  encourage 

infringements,  explore 

Commission/Industry 

by 2019 

Commission/Observatory 

by 2019 

Commission/Member 
States/EUIPO/Observatory 

by 2019 

14 

 
 
 
 
 
 
 
 
 
 
 
 
existing 
accreditation 
introduce IP compliance schemes. 

processes 

to 

3. 

FIGHTING IP INFRINGMENTS THROUGH ENHANCED ADMINISTRATIVE 
COOPERATION  

Step  up  efforts  and  make  the  public  more 
aware 
IP 
about 
infringements. 

related 

risks 

to 

Offer  more  targeted  assistance  to  national 
custom  authorities,  based  on  the  results  of 
the current Customs Action Plan, and work 
with the Council Presidency towards a new 
Customs Action Plan. 

EUIPO 

by 2019 

Commission/Council 

2018 

4.  

FIGHTING IP INFRINGEMENTS WORLDWIDE  

Publish a new report on the protection and 
enforcement  of  intellectual  property  rights 
in  third  countries,  introducing  new  focus 
areas  (i.e.  free  trade  zones,  geographical 
indications).  

Set up an IP markets watch-list, identifying 
online and physical markets that engage in 
or facilitate substantial IPR infringements. 

the 

Implement  on  the  basis  of  annual  work 
plans 
cooperation 
technical 
programmes  (the  IP  Key  programmes) 
with  China,  South-East  Asia  and  Latin 
America. 

Commission 

First half of 2018 

Commission 

2018 

Commission/Observatory 

2018-2019 

15