COMMISSION STAFF WORKING DOCUMENT EXECUTIVE SUMMARY OF THE EVALUATION Accompanying the document COMMUNICATION FROM THE COMMISSION TO THE EUROPEAN PARLIAMENT, THE COUNCIL AND THE EUROPEAN ECONOMIC AND SOCIAL COMITTEE Guidance on certain aspects of Directive 2004/48/EC of the European Parliament and of the Council on the enforcement of intellectual property rights
Date: 2017-11-29
Institutions: Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs, European Commission
Subjects: EU law - national law, application of EU law, directive (EU), intellectual property, single market

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  EN 

   EUROPEAN COMMISSION  Brussels, 29.11.2017 SWD(2017) 432 final  COMMISSION STAFF WORKING DOCUMENT EXECUTIVE SUMMARY OF THE EVALUATION Accompanying the document COMMUNICATION FROM THE COMMISSION TO THE EUROPEAN PARLIAMENT, THE COUNCIL AND THE EUROPEAN ECONOMIC AND SOCIAL COMITTEE 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 final} - {SWD(2017) 431 final}  
 
 
EXECUTIVE SUMMARY 

Background 

For  the  judicial  enforcement  of  intellectual  property  rights,  Directive  2004/48/EC1  requires 
Member  States  to  provide  for  effective,  proportionate  and  dissuasive  measures,  procedures 
and remedies. Before its adoption, a diverse set of rules, procedures and practices relating to 
the  enforcement  of  IPRs  had  developed  among  Member  States  which  was  found  to  be 
detrimental to the good functioning of the internal market. Therefore, as the first instrument to 
address  IPR  enforcement,  the  Directive  aimed  to  'approximate  legislative  systems  so  as  to 
ensure a high, equivalent and homogeneous level of protection in the internal market' (Recital 
10). 

The  purpose  of  this  evaluation  is  to  assess  the  Directive's  overall  effectiveness,  efficiency, 
coherence,  relevance  and  EU  added  value.  The  evaluation  aims,  in  particular,  to  assess 
whether  the  tools  provided  for  by  the  Directive  are  still  fit  for  purpose  in  today's  fast 
developing  digital  environment  and  in  a  cross-border  context.  This  evaluation  provides  the 
basis for the Commission's initiative to  improve the enforcement of IPRs within the EU, as 
announced in the digital single market strategy2 and the single market strategy3. 

Findings 

According to the overall views gathered from experts and stakeholders, and complemented by 
extensive  desk  research,  the  tools  provided  for  by  the  Directive  have  effectively  helped  to 
better  protect  IPR  and  have  enabled  a  more  effective  handling  of  IP  infringements  in  civil 
courts. The Directive has led to a common legal framework, where the same set of tools is to 
be applied across Europe. In this respect, it has achieved the objective of approximating the 
legislative systems of the Member States for the civil enforcement of IPR. In doing so, it has 
ensured a high, equivalent and uniform level of protection in the internal market overall.   

The  Directive  is  also  considered  to  have  been  a  cost-efficient  intervention,  preventing 
unnecessary  administrative  burden  and  implementation  costs  for  stakeholders  and  Member 
States.  It  has  helped  to  bring  about  more  harmonisation  across  the  EU  and  provides 
stakeholders with a common set of tools for litigating against IPR infringements.  

The Directive remains a relevant instrument for facilitating enforcement of different IPRs in 
the  digital  era  and  appears  to  be  coherent  with  other  EU  instruments  such  as  voluntary 
stakeholder  initiatives  that  can  act  as  a  powerful  complement  to  judicial  enforcement 
measures. Its EU added value is that it establishes a common set of tools for IP enforcement 
across the EU which would have been difficult to achieve without the Directive. 

1 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 
2 Communication from the Commission "A Digital Single Market Strategy for Europe" (COM(2015) 192 final) 
3  Communication  from  the  Commission  "Upgrading  the  Single  Market:  more  opportunities  for  people  and 
business" (COM(2015) 550 final) 

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The evaluation, however, revealed,  that there are differences in the way Member States apply 
certain  provisions  of  the  Directive  (such  as  those  on  injunctions,  damages  and  legal  costs) 
across  the  Single  Market,  thereby  limiting  the  effectiveness  of  the  Directive.  This  is  due  to 
uncertainties  and  diverging  views  as  to  how  those  provisions  should  be  understood,  in 
particular  given  the  challenges  of  the  digital  revolution  and  cross-border  context. 
Furthermore,  the  Directive's  consistent  application  is  limited  by  differences  in  the  national 
civil law procedural frameworks and differences in legal and judicial traditions.  

The evaluation shows, in particular, that, while the text of the Directive is still fit for purpose, 
there  is  a  need  to  offer  further  clarification  on  the  exact  scope  of  the  Directive,  the 
requirement  to  ensure  that  proceedings  are  inter  alia  ‘fair  and  equitable’  and  strike  a  fair 
balance  between  the  fundamental  rights  of  the  parties  concerned,  the  presentation  and 
preservation  of  evidence  (including  digital  evidence),  the  right  of  information,  the  scope  of 
injunctions and corrective measures, and the calculation of damages and legal costs which are 
particularly important to small- and medium-sized enterprises (SMEs). 

While  the  evaluation  includes  an  analysis  of  national  judicial  practices,  such  analysis  is 
significantly hampered by a lack of transparency of national judgments on IPR enforcement. 
Specifically dedicated websites allowing public access to IP-related case law only exist in a 
few Member States. Such lack of transparency substantially hinders the development of one 
judicial area in Europe. The evaluation further shows that many stakeholders consider that the 
objective  of  the  Directive  is  achieved  thanks  in  no  small  part  to  the  existence  of  national 
judicial authorities specialised in IPR enforcement matters. There was overwhelming support 
among  the  stakeholders  for  such  specialised  courts,  which  they  saw  as  a  key  factor  for 
efficient and effective IPR enforcement in general.  

Conclusions 

The Directive remains a relevant instrument for facilitating enforcement of different IPRs in 
the digital era and provides EU-added value through establishing harmonised rules across the 
EU.  The  measures,  procedures  and  remedies  provided  for  by  the  Directive  constitute  an 
effective, coherent and common toolbox for IP enforcement across the single market.  

However, there are significant differences in the way the Directive is applied across Member 
States which affects the effectiveness of the Directive. Some differences are due, in part, to 
different national civil procedural law frameworks and dissimilar legal and judicial traditions. 
But some substantial divergences result from a lack of uniform interpretation of the Directive.  

Therefore, the evaluation concludes that the Directive is still fit for purpose overall. However, 
the  Directive's  application  by  national  authorities  and  other  affected  parties  would  benefit 
from appropriate guidance on how to interpret its key provisions, taking into account means 
especially  important  for  SMEs.  It  would  also  benefit  from  more  best  practices  for  public 
exchange,  more  transparency  on  IP-related  case  law  and  more  national  judges  able  to  deal 
with IPR infringement claims.  

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