COMMISSION STAFF WORKING DOCUMENT EVALUATION Accompanying the document COMMUNICATION FROM THE COMMISSION TO THE EUROPEAN PARLIAMENT, THE COUNCIL AND THE EUROPEAN ECONOMIC AND SOCIAL COMMITTEE 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, digital technology, directive (EU), indemnification, intellectual property, judicial proceedings, legal expenses, right to information, single market

EN 

  EN 

   EUROPEAN COMMISSION  Brussels, 29.11.2017  SWD(2017) 431 final  COMMISSION STAFF WORKING DOCUMENT EVALUATION Accompanying the document COMMUNICATION FROM THE COMMISSION TO THE EUROPEAN PARLIAMENT, THE COUNCIL AND THE EUROPEAN ECONOMIC AND SOCIAL COMMITTEE 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) 432 final}  
 
 
Table of contents 

1. INTRODUCTION ...................................................................................................................................... 2 

2. BACKGROUND TO THE INITIATIVE ................................................................................................... 2 

2.1. the objective of the Directive .......................................................................................................... 2 
2.2. the Directive and national civil redress procedures ........................................................................ 3 
2.3. Context of this Evaluation .............................................................................................................. 4 

3. IMPLEMENTATION: STATE OF PLAY ................................................................................................. 6 

4. METHOD ................................................................................................................................................... 6 

5. Analysis and answers to the evaluation questions ............................................................................. 8 
5.1. Effectiveness .................................................................................................................................. 8 
5.1.1. Achievement of the main objective ................................................................................. 8 
Effects of the Directive ........................................................................................... 18 
5.1.2. 
5.1.3.  Main factors that support or hamper achieving the objectives ................................ 21 
Consequences or effects not originally planned ...................................................... 24 
5.1.4. 
5.2. Efficiency ..................................................................................................................................... 26 
5.2.1. Costs and benefits .......................................................................................................... 26 
5.2.2. Efficiency of the different measures .............................................................................. 30 
5.2.3.  Affordability and proportionality .................................................................................. 30 
5.2.4. National differences ....................................................................................................... 32 
5.3. Relevance ..................................................................................................................................... 33 
5.3.1. Objectives and stakeholder needs .................................................................................. 33 
5.3.2. Relevance of the different measures .............................................................................. 34 
5.3.3. Contribution of other developments .............................................................................. 36 
5.2.  Coherence ................................................................................................................................ 38 
Coherence of the different measures ....................................................................... 38 
5.2.1. 
Complementarity of non-legislative interventions .................................................. 39 
5.2.2. 
5.2.3. 
Coherence with other EU instruments and policies ................................................ 41 
EU added value ........................................................................................................................ 44 
EU added value of the directive .............................................................................. 44 
5.3.1. 
Need for continuous EU action ............................................................................... 45 
5.3.2. 

5.3. 

6. 

CONCLUSIONS ................................................................................................................................. 46 

ANNEX I: PROCEDURAL INFORMATION ............................................................................................. 48 

ANNEX II: SYNOPSIS REPORT ................................................................................................................ 50 

1)  STAKEHOLDER CONSULTATION ..................................................................................................... 50 

ANNEX III: PRACTICAL EXAMPLES AND ILLUSTRATIONS ............................................................ 59 

ANNEX IV: CONTEXT ............................................................................................................................... 65 

1 

 
 
1. INTRODUCTION 

The  purpose  of  this  evaluation  is  to  assess  the  functioning  of  the  Directive  2004/48/EC 
on the enforcement of intellectual property rights1 ("Directive", "IPR Enforcement Directive") 
in terms of its effectiveness, efficiency, coherence, relevance and EU added value. 

The Directive was adopted on 29 April 2004 and aims to contribute to creating a level playing 
field for the enforcement of intellectual property rights ("IPRs") in the EU and thus requires 
Member  States  to provide  for  certain  measures,  procedures  and  remedies  to ensure  the 
protection  of  IP.  For  the  purpose  of  the  Directive,  IPRs  include  industrial  property  rights 
(Article 1)2. 

This  evaluation  provides  an  assessment  on  whether  the  measures,  procedures  and remedies 
established by the Directive constitute a solid IPR enforcement toolkit, whether they are fit for 
purpose and achieve their objectives, inter alia in the digital environment. 

While  the  Member  States  should  have  complied  with  the  provisions  of  the  Directive  by 
29 April 2006, the Directive was implemented over a range of years up to 2009. The scope of 
the evaluation covers 28 Member States and the impacts of the Directive on the functioning of 
the internal market in relation to IPR enforcement since its entry into force. 

This report is based in particular on a study for an ex-post evaluation of the Directive3 which 
includes  an  open  online  public  consultation  carried  out  between  5  December  2015  and  15 
April  20164  as  well  as  several  stakeholders'  consultation  activities5  and  extensive  desk 
research. 

2. BACKGROUND TO THE INITIATIVE 

2.1. THE OBJECTIVE OF THE DIRECTIVE 

Before the adoption of the Directive, Member States had developed diverse set of rules and 
procedures  for  addressing  IPR  enforcement,  which  was  found  to  be  detrimental  to  the 
functioning of the internal market. Therefore, the Directive was the first instrument to address 
IPR enforcement for IP rights with the objective to approximate legislative systems so as to 
ensure  a high,  equivalent  and  homogeneous  level  of  protection  of  IP  rights  in  the  internal 
market  (Recital 10).  Within  this  context,  the Directive  sets  out  measures,  procedures  and 
remedies necessary to ensure the enforcement of intellectual property rights (Article 1). This 

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  Statement  2005/295/EC  by  the  Commission  concerning  Article  2  of  the  Directive  (OJ  L  94  of  13.4.2005) 
provides a list of IPRs which the Commission considers at least to be covered by the scope of the Directive. 
3  See  "Support  study  for  the  ex-post  evaluation  and  ex-ante  impact  analysis  of  the  IPR  enforcement  directive 
(IPRED)", Technopolis Group in a consortium with EY and Schalast Rechtsanwälte, 2017  
4  Public  consultation  on  the  evaluation  and  modernisation  of  the  legal  framework  for  the  enforcement 
at 
launched 
of intellectual 
http://ec.europa.eu/DocsRoom/documents/18661 
5 See Annex II – Synopsis report. 

9  December 

available 

property 

results 

rights 

2015, 

on 

2 

 
                                                            
includes  general  obligations  and  specific  provisions  on  legal  standing,  evidence  and 
information,  interlocutory  measures,  seizures  and  injunctions,  damages  and  legal  costs  and 
judicial publication.  

The protection  of  IP  is  important  not  only  for  promoting  innovation  and  creativity,  but  also 
for improving competitiveness, preserving employment, ensuring fair and equal competition, 
and  preventing  tax  losses  and  market  destabilisation.  All  these  aspects  are  reflected  in 
the intervention logic of the Directive, presented in Figure 1 below. 

Figure 1 – Brief description of the different components of the Directive, its objectives and its expected outcomes 

2.2. THE DIRECTIVE AND NATIONAL CIVIL REDRESS PROCEDURES 

The  Directive  seeks  to  provide  harmonisation  of  national  civil  redress  rules  and  procedures 
to ensure that all Member States have a similar minimum set of measures available primarily 
for rightholders to defend their IPRs.  

However, the Directive does not intend to provide for a full harmonisation of these measures, 
procedures and remedies, but does apply without prejudice to the means which are or may be 
provided for in EU or national legislation, in so far as those means may be more favourable 
for rightholders, and thus contains only minimum harmonisation rules (Article 2(1)). 

3 

Needs: Varying and insufficentmeans for civil enforcement of IP rights across Member States in order to stop and limit the occurrence of counterfeiting andpiracy and other IPR infringementsPolicy Development: Enforcement Directive 2004/48/EC (IPRED)•Harmonisation of rules and remedies regarding civil enforcement of IP rights•Requirement for all measures to be proportionate, to avoid creating barriers to legitimate trade and to safeguard against abuse (e.g., in terms of fundamental rights)Art. 6 and 7:Gathering of evidence and measures to preserve evidenceBetter and faster access to justiceResults (outcomes)ActivitiesBetter functioning of the EU internal market for IPRHigher level of safety and consumer protectionImpactsOutputsAccessibility to effective means of presenting, obtaining and preserving evidencePossibility to obtain precise information on origin and distribution networks of IP infringing goodsAppropriate damages to compensate prejudice sufferedTermination of further damaging infringement activity (until the matter is resolved (preliminary) or permanently/for good)More jobsExternal factors:•Development of technology for the distribution of legal and illegal products as for the detection and prevention of IPR infringements•Development of new business models for illegal and legal products•Globalisation of supply chains•Availability and accessibility of IPR infringing products•Availability of resources (human and financial) for businesses to detect and enforce IPR infringements•Strategies that make legal content & originals more attractive (availability, convenience of legal alternatives; attractive pricing; creation of IP culture through public outreach)•Interaction with other pieces of law, e.g. on e-commerce, civil procedures in cross-border context, etc.Objective 1:Achieving the internal market for IPRObjective 2:Promote investment in innovation and business competitivenessObjective 3:Ensuring fair and equal competitionObjective 4:Preserving employment in EuropeObjective 5:Preventing tax losses and market destabilisationObjective 6:Ensuring consumer protectionMore legit sales and revenues More innovationMore tax revenueInputsArt. 8:Requesting information from infringer or another person on origin and distribution networks of IP-infringing goodsArt. 9 and 11:Ordering provisional or permanent injunctive relief against infringer or intermediariesArt. 13:Calculation of damagesArt. 14:Reimbursing of legal costsArt. 15:Publishing of judicial decisionsReasonable and proportionate legal costs Improved information base in the market on position of IP holder and infringementObjectivesBetter protection of IPRReduction of IPR infringementsElimination of disparities in existing national systems for civil enforcement of IPR  
 
 
Therefore,  enforcement  of  IPRs  is  not  limited  to  a  single  Directive,  but it  encompasses 
an enforcement  system  with  complementing  parts  going  beyond  the  Directive's  scope.  This 
national civil enforcement pillar, composed first and foremost of the national procedural civil 
law,  is critical  for  the  success  of  the Directive,  since  the effectiveness  of  the  instruments 
provided for by the Directive depends on the effectiveness of the overall justice system.  

Finally, as provided in its Article 3, the means that the Directive sets out to be transposed by 
the Member States must be "fair and equitable" and must not be “unnecessarily complicated 
or  costly,  or entail unreasonable time-limits or  unwarranted delays”. They  must  furthermore 
be effective, proportionate and dissuasive and must not act as barriers to legitimate trade and 
provide safeguards against abuse. 

2.3. CONTEXT OF THIS EVALUATION 

Prior to the adoption of the Directive, a diverse set of rules, procedures and practices relating 
to  the  enforcement  of  IPRs  developed  among  Member  States  which  was  found  to  be 
detrimental to  the  good functioning of  the  internal  market.  Therefore, the  Directive was  the 
first  horizontal  tool  to  address  IPR  enforcement  with  the  aim  to  'approximate  legislative 
systems so as to ensure a high, equivalent and homogeneous level of protection in the internal 
market' (Recital 10). 

This evaluation started in December 2015 and is based, in particular, on a study for an ex-post 
evaluation  of  the  Directive6  which  includes  an  open  online  public  consultation  carried  out 
between  5  December  2015  and  15  April  20167  as  well  as  several  stakeholders  consultation 
activities8 and extensive desk research.. 

As prescribed in its Article 18, an analysis of the Directive's application was conducted three 
years  after  the  Directive's  transposition  deadline.  This  analysis  provided  for  a  first  although 
incomplete review, mostly because in some of the Member States the implementation process 
was  only  finalised  in  2009.  In  its  result  the Commission  concluded  that  the  Directive  had 
a substantial  and  positive  effect  on  the  civil  enforcement  of  IPRs  in  the EU9.  Nonetheless, 
the report underlined that several issues could deserve further attention, namely:  
 
 
  procedures to gather and preserve evidence  
 
 

the relationship between the right of information and protection of privacy, 
the meaning of various corrective measures, including the costs of destruction, and  

the challenge posed by the online infringements of IPRs, 
the use of provisional and precautionary measures such as injunctions, 

6 See "Support study…" 
7  Public  consultation  on  the  evaluation  and  modernisation  of  the  legal  framework  for  the  enforcement 
of intellectual 
at 
launched 
http://ec.europa.eu/DocsRoom/documents/18661 
8 See Annex II – Synopsis report. 
9  Report  from  the  Commission  "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)0779 final) 

9  December 

available 

property 

results 

rights 

2015, 

on 

4 

 
                                                            
 

the calculation of damages.  

Due to the Directive's late implementation and unavailability of competent judicial authorities' 
decisions  demonstrating  how  the  measures,  procedures  and  remedies  are  applied,  additional 
analysis  was necessary for a  more comprehensive overview. To that  aim a follow-up public 
consultation was conducted in March 2011, followed by a public hearing on the application of 
the  Directive  in  a  digital  environment  in  June  201110.  Further  to this,  a  broad  public 
consultation  on  the  efficiency  of  proceedings  and  accessibility  of measures  in  the  civil 
enforcement of IPRs was launched in November 201211. 

In the wake of the confirmation that the Anti-Counterfeiting Trade Agreement ("ACTA"), a 
multilateral Treaty on IPR enforcement that was being negotiated with key trading partners, 
would not be signed by the EU, the Commission re-oriented its policy approach.  

In July 2014, the Commission outlined an Action Plan for IPR enforcement12, with which it 
sought to promote better compliance with IPRs by all economic actors. Rather than penalising 
the  citizen  for  infringing  –  often  unknowingly  –  IPRs,  the proposed  actions  focused  on  the 
commercial  scale  infringers.  This  so-called  'follow-the-money  approach'  endeavored  to 
deprive commercial scale infringers of the revenue flows that draw them into illegal activities.  

While  the  action  plan  was  seen  as  an  important  way  to  improve  the  EU  approach  to 
the enforcement  of  IPRs,  the  Parliament  and  Council  called  on  the  Commission  to  examine 
whether the EU legislative framework in that area was still fit for purpose: 

  The  Council13  recalled  that  several  other  aspects  of  IPR  enforcement  not  contained  in 
the Action  Plan  were  raising  questions,  including:  the  use  of  tools  available  to  identify 
IPR infringers; the role of intermediaries in assisting the fight against IPR infringement; 
and the allocation of damages in IPR disputes. The Council encouraged the Commission 
to consider all possible options to address these matters. 

  The  European  Parliament14  called  on  the  Commission  to  come  up  with  a detailed 
assessment  of  possible  limitations  of  the  current  legal  framework  as  regards  online 
activities and, if appropriate, with proposals for adapting the EU legislative framework to 
the internet environment. 

In  2015,  first  in  the  Digital  Single  Market  Communication15  and  then  in  the  Single  Market 
Strategy16, the Commission announced that it would conduct a review of the IPR enforcement 

10 http://ec.europa.eu/internal_market/consultations/2011/intellectual_property_rights_en.htm 
11 http://ec.europa.eu/internal_market/consultations/2012/intellectual-property-rights_en.htm 
12  Commission  Communication  "Towards  a  renewed  consensus  on  the  enforcement  of  Intellectual  Property 
Rights: An EU Action Plan", COM(2014) 392 final of 1.7.2014,  
13 Conclusions of the Council of the European Union of 5 December 2014 on IPR enforcement (15321/14) 
14  Report  of  the  European  Parliament  on  "Towards  a  renewed  consensus  on  the  enforcement  of  Intellectual 
Property Rights: An EU Action Plan" (2014/2151(INI)) of 18.5.2015 
15 Communication from the Commission "A Digital Single Market Strategy for Europe" (COM(2015) 192 final 
16  Communication  from  the  Commission  "Upgrading  the  Single  Market:  more  opportunities  for  people  and 
business" (COM(2015) 550 final) 

5 

 
 
                                                            
framework to respond to the rise of IPR infringements, with a specific focus on commercial-
scale infringements.  

More information on the policy, legal and economic context of the evaluation is provided in 
Annex IV. 

3. IMPLEMENTATION: STATE OF PLAY 

In  2012  an  external  study17  examined  the  transposition  of  the  Directive  by  Member  States. 
According  to  this  study  most  Member  States  succeeded  in  meeting  the  Directive's 
requirements,  and  complied  with  the  minimum  harmonisation  introduced.  In the  other 
Member  States  the  most  important  discrepancy  was  the  lack  of  provisions  against 
intermediaries whose services are used by a third party to infringe IPRs. 

While  not  all  of  the  Member  States  needed  to  change  their  existing  legal  provisions  on 
enforcement  extensively  to  transpose  the  Directive,  the  most  important  amendments  in 
national  legislation  concerned  generally  speaking  rules  on  obtaining  and  securing  evidence 
(Article 6 and 7), right of information (Article 8) and injunctions (Articles 9 and 11).  It was 
also  reported  that  in some  Member  States  there  were  discrepancies  as  to  enforcement 
of different  types  of  IPRs,  in  particular  regarding  plant  variety  rights,  trade  names,  utility 
models, and topographies of semiconductor products. 

4. METHOD 

Methodology 

This report is based on various sources of information: an external study providing support for 
an  ex-post  evaluation  of  the  Directive  ("Evaluation  Study")18,  which  included  open  online 
public  consultation19  (results  presented  in  Annex  II),  statistics  on  collected  court  decisions 
from  all  EU  Member-States  concerning  intellectual  property  law,  studies  prepared  by 
the European  Observatory  on  Infringements  of  Intellectual  Property  Rights  and  other 
available studies and data collections prepared by national or international public authorities, 
academics  or  other  stakeholders.  Several  discussions  have  also  taken  place  with  Member 
States in the Expert Group on IPR enforcement20, providing information on the way in which 
key measures are being applied at national level. Finally, on 21 June 2016, the Commission 
held  a conference  on  IPR  enforcement21,  where  key  European  and  international  policy- 
makers,  public  representatives,  enforcement  agencies,  rights-holders  and  representatives  of 
civil society gathered to review the progress made in disrupting IP infringing activities. 

17 Conformity Assessment of Directive 2004/48/EC, TIPIK 2012 
18 See "Support study…" 
19  Public  consultation  on  the  evaluation  and  modernisation  of  the  legal  framework  for  the  enforcement 
of intellectual  property 
responses  and  summary  available  at  http://ec.europa.eu/growth/tools-
databases/newsroom/cf/itemdetail.cfm?item_id=8580 
20 Expert Group on IPR enforcement meetings of 3 May 2016 and 3 April 2017 
21 http://ec.europa.eu/growth/tools-databases/newsroom/cf/itemdetail.cfm?item_id=8730 

rights, 

6 

 
                                                            
The lack of quantitative data was compensated through increased inputs from interviews with 
stakeholders and the network of legal experts in the different Member States, who contributed 
to the analysis. 

Limitations of findings and mitigating measures 

The  EU  intervention  in  the  area  of  IPR  enforcement  has  a  particular  nature,  given  that  it 
approximates  legislative  systems  of  the  Member  States  so  that  the  tools  provided  in  the 
Directive  build  on  and/or  continue  to  live  alongside  with  the  national  civil  procedural  law 
practices pre-dating the Directive.  

This  character,  combined  with  important  technological  and  market  developments  that  have 
taken place since the adoption of the Directive, as well as the lack of monitoring arrangements 
in the Directive itself, make it difficult to detect clear causal links between the intervention's 
impact and the evolving reality of IPR infringements.  

Significant differences between the Member States' civil enforcement systems, both in legal 
and economic terms, have further complicated drawing conclusions on the functioning of the 
Directive. 

In  addition,  despite  best  efforts,  only  very  limited  quantitative  data  could  be  gathered  on 
the application of measures, procedures and remedies set out in the Directive. 

To  obtain  an  overview  of  the  volume  of  IP  court  cases  in  the  EU,  data  on  all  28  Member 
States  between  2005  and  2015  was  sought.  However,  obtaining  data  on  relevant  categories 
of court decisions has proved problematic. The difficulties in finding accurate and complete 
information are due to different administrative practices in publishing court decisions across 
the EU. While in some Member States most of those decisions are made publicly available, in 
other  Member  States  the  publication  is  either  limited  to  certain  types  of  decisions  or  even 
excluded in individual cases. Furthermore, certain decisions may also be anonymized in such 
a way that relevant information cannot be extracted or identified.22 

The  fact  that  the  evaluation  can  only  rely  on  limited  empirical  evidence  impedes  reaching 
definitive  conclusions  on  the  detailed  performance  criteria  of  this  Directive.  As  a 
consequence, the observations  – although  made  on the basis of  the best available  data  - are 
merely descriptive and effects cannot be attributed in full to the Directive. In particular, the 
results of the econometric model analysis cannot be interpreted to establish a causality link.  

Mitigating  measures  were  taken  to  compensate  for  the  lack  of  quantitative  data  through 
increased  inputs  from  interviews  with  stakeholders  and  the  network  of  legal  experts  in 
the different Member States, who contributed to the analysis. 

Finally, since the Directive does not provide for monitoring arrangements (other than a report 
in  a  systematic 
by 

lacked  evidence  covering 

the  Commission), 

the  evaluation 

22 See also under 5.3.2  

7 

 
                                                            
and comprehensive manner the whole period of its application. The work of the Observatory 
complemented  part  of  the  evaluation,  but  cannot  be  considered  as  a  uniform  reporting  tool 
covering nor all IP rights, neither cross-border activity. 

5. ANALYSIS AND ANSWERS TO THE EVALUATION QUESTIONS 

5.1. EFFECTIVENESS 

The  functioning  of  the  Directive  in  terms  of  effectiveness  was  assessed  on  the  basis  of  the 
following evaluation questions: 

1)  To what extent has the Directive, with its different measures, procedures and remedies it 
provides for, achieved its objective, i.e. to ensure a level playing field for the enforcement 
of intellectual property rights? 

2)  What  have  been  the  effects  of  the  Directive?  To  what  extent  do  those  observed 
effects/changes correspond to the objectives? To what extent can those effects/changes be 
attributed  to  the  directive?  To  what  extent  can  those  effects  be  linked  to  other  EU 
instruments? 

3)  What  are  the  main  factors,  e.g.  in  the  formulation  but  also  the  implementation  and 
application  of  the  rules,  that  support  or  hamper  achieving  these  objectives?  To  what 
extent have the different measures, procedures and remedies provided for by the Directive 
been  complemented  by  non-legislative  interventions  at  EU  and  national  level,  including 
voluntary stakeholder initiatives? 

4)  What are the consequences or effects (both positive and negative) that were not originally 

planned? 

5.1.1. ACHIEVEMENT OF THE MAIN OBJECTIVE 

Evaluation question 1 

To  what  extent  has  the  Directive,  with  its  different  measures,  procedures  and  remedies  it 
provides for, achieved its objective, i.e. to ensure a level playing field for the enforcement 
of intellectual property rights? 

THE DIRECTIVE AS A WHOLE 

5.1.1.1. 
Evidence from the several stakeholder consultations23 indicates that the Directive has mainly 
achieved  its  objective  to  improve  civil  enforcement  of  IPRs.  In  response  to  the  public 
consultation  most  rightholders  and  representatives  of  the  judiciary  and  legal  profession  felt 
that  the implemented  rules  partly  achieved  the  objective  of  ensuring  effective  civil  redress 
against  IPR  infringements  (63%  and  55%  of  representatives  respectively).  The  views 

23 See Annex II – Synopsis report. 

8 

 
 
 
 
 
 
 
                                                            
 
of intermediaries,  citizens  and  Member  States  were  more  positive,  with  the  majority 
of respondents  reporting  that  the  existing  rules  had  been  effective.  The  Evaluation  Study 
concluded24 that for the most part the Directive has indeed improved the enforcement of IPR. 
The study indicates that the Directive proved to be effective on very general and conceptual 
level, allowing for a common legal European framework, the development of pan-European 
enforcement strategies, and a productive exchange of intelligence among judges cross-border. 
It was also concluded that higher order effectiveness is hampered by the actual application of 
the Directive in the Member States, which is not so much due to the way it is transposed as 
legal  text,  but  how  civil  court  proceedings  and  traditions  operate  in  general  in  different 
Member States.25 In response to the public consultation the majority of stakeholders did not 
consider that the measures, procedures and remedies provided for in the Directive are applied 
in a homogeneous manner across the Member States. 

This  is  also  confirmed  by  a  recent  study  on  patent  litigation  in  Europe26,  which  compares 
patent  litigation  cases  in  France,  Germany,  the  Netherlands  and  the  UK  and  analyses 
the effects of these different enforcement systems on the outcome of cases. The study points 
out at the inconsistency of decision-making in the European patent litigation system. 

5.1.1.2. 

EFFECTIVENESS OF THE MEASURES SET OUT IN THE DIRECTIVE 

5.1.1.2.1.

  PRESENTING, OBTAINING AND PRESERVING EVIDENCE (ARTICLES 6 AND 7) 

Article 6 of the Directive requires Member States to provide the ability to apply for a court 
order  requiring  the  opposing  party  to  produce  specified  evidence,  such  as  a  sample 
of a substantial  number  of  allegedly  infringing  copies.  In  case  of  infringements  on 
a commercial  scale,  the  evidence  may  include  banking,  financial  or  commercial  documents 
under the control of the opposing party. 

Given that only the infringer knows the quantities of the infringed goods and the rightholder 
may  only  have  a  few  samples,  the  ability  to  obtain  banking,  financial  and  commercial 
documents  that  provide  reliable  information  about  the  quantities  of  products  sold  or 
distributed  and  revenues  obtained  by  the  alleged  infringer,  is  key.  Lack  of  this  information 
hampers in particular the rightholders' claims for damages.  

Evidence – in particular in the online world – can be destroyed rather quickly and easily, thus, 
Article 7 provides for prompt and effective provisional measures to preserve evidence. They 
may  be  ordered  by  the  court  even  before  proceedings  on  the  merits  of  the  case  have  been 
instituted  and  if  the rightholder  has  already  substantiated  the  infringement  or  threat  of 
infringement to a reasonable extent. Member States should set out measures that may include 
description,  search  orders  or  seizure  of  goods,  and  in  certain  cases  materials  used  in  the 

24 See "Support study…", p. 132 
25 See "Support study…", p. 132 
26  Patent  litigation  in  Europe,  Eur  J  Law  Econ  (2017)  44:1–44,  available  online  under  the  following  link: 
http://link.springer.com/article/10.1007/s10657-016-9529-0 

9 

 
                                                            
production  and/or  distribution  of  the  goods  and  related  documents.  While  search  orders  as 
such  tend  to  be  in  general  easily  obtained,  they  are  not  available  in  the  scope  of  civil 
proceedings in Hungary and Malta. The costs for search orders (which are often covered by 
the rightholder in advance) also vary; in the UK they tend to be prohibitive, and as a result 
they are barely used.  

All Member States have incorporated these provisions for the presentation and preservation of 
evidence in their legal system.  

The majority of respondents to the public consultation considered that the measures provided 
by  the  Directive  are  effective  for  presenting,  obtaining  and  preserving  evidence.  Some 
respondents  however  considered  that  the  provisions  on  evidence  could  benefit  from 
clarification,  in  particular  with  regard  to  the  preservation  of  evidence  in  the  digital 
environment and the presentation of evidence obtained in another jurisdiction.  

The  use  and  presentation  of  digital  evidence  and  the  access  to  digital  information  is  not 
explicitly regulated by the Directive, and therefore largely relies on national civil procedures, 
what  allows  for  the  necessary  amount  of flexibility.  Most  stakeholders  believe  that  the 
measures provided for by the Directive for presenting and preserving evidence are not adapted 
to the online context.  

Half  of  the  rightholders  responding  to  the  public  consultation  indicated  that  they  faced 
problems  using  evidence  when  making  use  of  their  right  of  information/taking  legal 
action/applying  for  an  injunction  in  a  cross-border  situation.  The  Evaluation  Study  also 
reported  a  lack  of  effectiveness  of  the  rules  of  evidence  in  a  cross  border  context,  largely 
revolving around four main issues:  

 

the difficulty of gathering evidence in practice for foreign cases and of using evidence of 
an infringement in a country other than the country where the litigation is taking place; 
  cost,  e.g.  where  discrepancies  among  Member  States  on  the  thresholds  for  requiring 

 

production of evidence may increase expenses;  
inconsistency  in  availability  of  information  in  different  Member  States.  For  example, 
some Member States reportedly do not provide information about importers/exporters of 
goods seized by Customs.  

  national  differences  as  regards  the  production  and  preservation  of  evidence,  which 
occasionally  led  to  that court  orders  issued  in  one  Member  States  not  being  accepted  in 
another.  

On a general level, Articles  6 and 7 of  the Directive has  proved to  be  effective to  a certain 
extent, since they provided for tools to present and preserve evidence in all Member States. 
However,  the  application  of  the  specific  measures  differs,  depending  on  the  civil  procedure 
law and tradition of a specific Member State. Obtaining and securing digital evidence, as well 
as  using  evidence  in  the  cross-border  context,  has  proved  to  particularly  challenge  the 
effectiveness of the Directive. 

10 

 
 
5.1.1.2.2.

  RIGHT OF INFORMATION (ARTICLE 8) 

The  right  of  information  ("ROI"),  established  in  Article  8  of  the  Directive,  allows  the 
competent  judicial  authorities  to  order  that  information  on  the  origin  and  distribution 
networks  of the goods  or  services  which  infringe  an  IP  right  shall  be  provided  by  certain 
persons if the infringer was found to be using the infringing services on a commercial scale. 

According  to  the  data  presented  in  the  Evaluation  Study27  the  number  of ROI  requests 
substantially increased after the transposition of the Directive into national law for all types of 
IP and for all Member States.  

In  the  course  of  the  public  consultation  the  majority  of  respondents  from  Member  States, 
intermediaries and the judiciary expressed the opinion that the existing rules on the ROI have 
helped  effectively  in  protecting  IP  and  preventing  IPR  infringements.  The  majority  of 
consulted rightholders considered that there was a need to clarify the provisions on the ROI 
application to ensure that the right balance is struck between the right to property and the right 
to judicial review on the one hand and the right to respect for private life and/or the right to 
protection of personal data on the other.    

Rightholders also consider that the effectiveness of this measure is affected by the difference 
in  requirements  at  national  level  for  a  ROI  request  to  be  justified  and  granted,  in  particular 
against a third person.  

It  has  been  also  reported  by  the  stakeholders  that  since  the  Directive  merely  refers  to  "the 
context  of  proceedings  concerning  an  infringement  of  an  intellectual  property  right"  it  is 
unclear  if  the  ROI  can  only  be  exercised  when  proceedings  on  the  merits  of  the  case, 
establishing the existence of an infringement, have been launched or if it can be used already 
before the commencement of proceedings on the merits of the case28.  

According  to  the  Evaluation  Study,  differences  also  exist  in  the  application  of  the  measure 
against a third party who is not an infringing party. In Poland, there are limited mechanisms 
ensuring proportionate use of the right of information and the use of "access to information" 
for industrial property is very limited. It is because information can be requested only when 
infringement  occurs  with  "high  probability".  In  Ireland,  for  example,  the  applicant  must 
present a prima facie case that an infringement of IP rights has occurred and the information 
sought will disclose the identity of the alleged infringers. 

It also results from the study that the use of this measure varies significantly between Member 
States, with some jurisdictions not using the measures at all29. 

27 See "Support study…", p.  251 
28 In some Member States, such as Belgium or Romania, requests for information can only be made in the course 
of  proceedings  while  in  other,  e.g.  Germany,  the  use  of  the  right  of  information  may  be  exercised  before  the 
launch if special statutory requirements ('manifest infringement') are complied with. 
29 Bulgaria, Cyprus, Croatia, Latvia, Lithuania, Malta, Slovakia and Slovenia. See "Support study…", p. xxx. 

11 

 
                                                            
In general, the existing rules on ROI have ensured for a certain level of protection of IP by 
allowing national judicial authorities to order that information on the origin and distribution 
networks  of  IP  infringing  goods  and  services  is  to  be  provided.  Even  though  all  the  MS 
transposed this provision and agree that the ROI is necessary for an effective enforcement of 
IPRs,  the  effectiveness  of  this  measure  has  been  limited  due  to  the  differences  in  the 
application among Member States.  

5.1.1.2.3.

  PROVISIONAL  AND  PRECAUTIONARY  MEASURES  AND  INJUNCTIONS (ARTICLES 9 

AND 11) 

Article  9  of  the  Directive  provides  for  the  possibility  to  apply  for  interlocutory  injunctions 
(court  orders  to  compel  or  prevent  a  party  from  doing  certain  acts  pending  the final 
determination  of  the  case)  intended  to  prevent  imminent  infringements  of  their  IPRs,  or  to 
stop the on-going infringements, on a provisional basis. Such interlocutory injunctions should 
also  be  available  against  intermediaries  whose  services  are  used  by  third  parties  to  infringe 
IPR, under the same conditions. Article 11 provides that where a judicial decision confirming 
an  infringement  of  an  IPR  is  taken  through  proceedings  on  the  merits  of  the  case  national 
courts  may  issue  an  injunction  ('permanent'  injunction)  against  the  infringer  aimed  at 
prohibiting  the  continuation  of  the  infringement30.  Such  permanent  injunctions  can  also  be 
issued against intermediaries.  

The  Evaluation  Study  concluded  that  preliminary  injunctions  (and  other  provisional 
measures)  are  the  most  effective  measures  against  alleged  IP  infringers.  The  possibility  of 
obtaining  a provisional measure  –  to  be in  the position  to order  an  alleged  infringer to  stop 
selling,  importing  or  manufacturing  products  or  providing  services  until  a  final  verdict  is 
reached and the different arguments are assessed  – has proven the most powerful feature of 
this instrument.  The  econometric analysis  performed  in  the  Evaluation  Study31  however  did 
not provide any further solid conclusions. The legal analysis indicated that the effectiveness 
of the measure is again impacted by the application of the remedy at national level. 

While  under  Article  9  interlocutory  injunctions  must  also  be  available  against  any 
intermediary whose services are used by third parties to infringe IP rights, different notions of 
'intermediary' are used at national level32. Also, the procedure for and scope of interlocutory 
injunctions  is  still  fragmented  across  the  EU,  establishing  different  conditions  for  the 
existence  of  urgency  (different  time  limits  for  the  request,  demonstration  of  a  likely 

30 Article 11: 'Member States shall ensure that, where a judicial decision is taken finding an infringement of an 
intellectual  property  right,  the  judicial  authorities  may  issue  against  the  infringer  an  injunction  aimed  at 
prohibiting the continuation of the infringement. Where provided for by national law, non-compliance with an 
injunction  shall,  where  appropriate,  be  subject  to  a  recurring  penalty  payment,  with  a  view  to  ensuring 
compliance. Member States shall also ensure that rightholders are in a position to apply for an injunction against 
intermediaries  whose  services  are  used  by  a  third  party  to  infringe  an  intellectual  property  right,  without 
prejudice to Article 8(3) of Directive 2001/29/EC.' 
31 See "Support study…",  p. 78 
32 E.g. "the one who delivers a counterfeiting service in the framework of its counterfeiting activity in French 
territory’ (France) or "anyone who contributes to the infringement" (Sweden).  

12 

 
                                                            
irreparable harm required or not)33, the level of evidence required34 and the type of evidence 
admissible35. 

Similar  findings  can  be  observed  with  regard  to  injunctions  to  prohibit  permanently  the 
continuation  of  the  infringement.  While  under  Article  11  these  permanent  injunctions  must 
also be available against intermediaries whose services are used by third parties to infringe IP 
rights,  disparities  remain  as  to  the  type  of  intermediary  that  can  be  enjoined  and  whether 
injunctions  can  be  obtained  to  prevent  future  infringements36.  In  some  Member  States  (e.g. 
Germany) injunctions against intermediaries can only be obtained if they have some liability 
in the infringing activities.  

In their responses to the public consultation, some rightholders also flagged as a problem the 
scope of forward looking injunctions.37 The rightholders, representatives of the judiciary and 
legal profession as well as Member States indicated in the public consultation that they would 
welcome  clarifications  with  regard  to  the  scope  of  provisional  and  permanent  injunctions' 
applications.  In  their  view  it  should  be  clarified  that  all  types  of  intermediaries  can  be 
enjoined, that no specific liability or responsibility (e.g. violation of any duty of care) of the 
intermediary  is  required  to  issue  an  injunction  and  that  national  courts  may  order 
intermediaries  to  take  measures  aimed  not  only  at  bringing  to  an  end  infringements  already 
committed against IPR using their services, but also at preventing further infringements.  

In conclusion, the effectiveness of the requirements for obtaining provisional and permanent 
injunctions  against  an  infringer  and  against  an  intermediary  in  contributing  to  the 
improvement  of  access  to  efficient  civil  enforcement  of  IPR  appears  to  be  limited  by  the 
subsequent divergent application of the EU rules at national level. 

5.1.1.2.4.

  DAMAGES (ART. 13)  

According to Article 13 of the Directive, Member States shall ensure that the infringer pays 
the rightholder damages appropriate to the actual prejudice suffered by him/her as a result of 
the  infringement.  The  Directive  provides  two  models  for  the  calculation  of  damages,  one 
based  on  taking  into  account  "all  appropriate  aspects"  of  the  infringement  and  the  other  on 
a lump sum method. According to the first one, the calculation of damages should be based on 
aspects  such  as  negative  economic  consequences,  including  lost  profits,  which  the  injured 

33 "National implementation of Enforcement Directive", Union-ip, 2011 
34 "serious questions to be tried", "interests of the IPR owner prevail over the interests of the alleged infringer" or 
"reasonable evidence that a favourable judgment will be granted to that applicant". 
35 Ibid.  
36 E.g. in the UK injunctions can be granted against online and offline intermediaries and also to prevent future 
infringements of the same kind whereas it seems not possible yet to have an injunction granted in Poland against 
an internet access provider to block access to an IP infringing website or in the Czech Republic to prevent the 
continuation of infringing activities. 
37 While in some jurisdictions catalogue- or repertoire-wide injunctions, i.e. injunctions requiring intermediaries 
to prevent further "infringements of all rights held by a rightholder or that are part of a licensee's catalogue or 
repertoire", based on an established infringement of a sample of those rights, are available (e.g. Ireland and the 
UK), such broad injunctions are not available in others. 

13 

 
                                                            
party  has  suffered,  any  unfair  profits  made  by  the  infringer,  and,  in  appropriate  cases, 
elements other than economic factors, such as the moral prejudice caused. Alternatively, the 
award of damages may consist in a lump sum based on elements such as at least the amount 
of  royalties  or  fees  which  would  have  been  due  if  the  infringer  had  requested  authorisation 
to use the IPRs concerned (e.g. on the basis of licensing agreement). 

This measure is effective, first and foremost, if rightholders are able to obtain compensation 
for the actual prejudice suffered as a result of IPR infringements. As a secondary objective it 
should  also  act  as  a  deterrent  to  infringers.  Starting  proceedings  on  the  merits  to  claim 
damages  is  an  investment  of  time  and  resources;  because  the  civil  court  proceedings  in  IP 
matters can in certain cases take several years before the final decision is issued, and tend to 
be costly inter alia due to the specialist expertise needed, many rightholders consider it is not 
worth to launch such proceedings if the financial outcome cannot be predicted. 

An  overall  majority  of  the  judiciary,  legal  profession  representatives  and  of  the  Member 
States  found  in  their  responses  to  the  public  consultation  that  the  rules  for  setting  damages 
helped  effectively  in  protecting  IPR  and  preventing  infringements.  Half  of  the  responding 
rightholders  however  considered  the  award  of  damages  to  be  insufficient,  almost  all  saying 
that  the  application  of  the  rules  in  court  is  the  main  obstacle  to  a  sufficient  compensation. 
According  to  rightholders,  damages  are  not  assessed  in  their  entirety,  sometimes  with 
the result that infringers are subject to the same conditions as a regular licensee. According to 
rightholders the main reasons for not claiming damages are the low probability of obtaining 
appropriate  compensation  for  the  damages  suffered  and  for  the  reimbursement  of  legal 
costs/other expenses. Rightholders call for a clarification of the rules, in particular the rules on 
quantification of damages, in order to ensure reimbursement of the actual prejudice suffered 
as well as dissuasion of future infringements. The judiciary and legal profession did also call 
for  more  legal  clarity  on  the  calculation  of  damages  and  for  a  reduction  in  the  cost  of 
producing evidence related to damages. 

The limited data available analysed in the Evaluation Study38 point to significant differences 
in damages requested and awarded by courts in different Member States and across different 
IPRs, raising the question of a level playing field for IPR enforcement and an equal level of 
protection for IPR in the EU39. 

As  described  above,  the  Directive  provides  for  two  alternative  methods  of  setting  the 
damages. Member States' national rules and practices differ considerably however in what is 
included in the calculation and how: 

  negative  economic  consequences  and  unfair  profits  made  by  the  infringer  can  be 
cumulated  (e.g.  Belgium,  Luxemburg  or  the  Netherlands)  or  shall  not  be  cumulated 
(Germany, Italy or Slovakia); 

38 See "Support study…",  p. 205 
39 See "Support study…", p. 65 

14 

 
                                                            
  damages for moral prejudice suffered may be granted only in copyright cases (excluding 
owners of industrial property rights), only to physical persons (excluding legal entities)40, 
only in cases of intentional or negligent infringements (Finland), or may be granted even 
without suffering material damages (Slovenia); 
the abstract calculation method on the basis of the amount of hypothetical royalties/fees is 
only available if the actual prejudice cannot be calculated (Hungary, Latvia, Slovakia); 
the lost profits are estimated41.  

 

 

These  examples  show  that  not  all  Member  States  have  implemented  the  criteria  for 
the calculation  of  damages  set  in  the  Directive  as  alternative,  and  therefore  not  all  leave  an 
actual choice to the judicial authorities/applicants. In particular, it seems that in some Member 
States 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  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.42 

A study by the EUIPO provides for a recent update on how costs and damages are approached 
across  Member  States43.  While  it  does  not  provide  data  on  costs  and  damages  awarded,  it 
insists on the difficulty for courts to calculate damages and highlights the shortcomings of this 
measure in achieving its objective . 

An  additional  reason  for  the  discrepancy  between  damages  requested  and  awarded  is  the 
burden of proof.44 While a high burden of proof ensures that any damages awarded do not go 
beyond  the  prejudice  actually  suffered,  it  also  makes  it  more  difficult  for  applicants  to 
substantiate that prejudice. This can be particular problematic in establishing loss of profits of 
the rightholder and unfair profits made by the infringer: 

40  "Damages  in  Intellectual  Property  Rights",  European  Commission,  European  Observatory  on  Infringements 
of Intellectual Property Rights, 2010 
41 In the Netherlands, the calculation for loss of sale is based on the profit that the aggrieved party would have 
had in the absence of the infringement. There is no uniform calculation method for this and the indirect profit 
loss is difficult to prove.  In Spain, the basis for damages is ‘loss suffered’, which includes: opportunity costs 
(for example time spent by the IP right owner’s personnel dedicate to the management of the procedure which 
would  have  been  otherwise  dedicated  to  the  commercial  activity  of  the  company),  communicating  costs 
(informing the clients about the infringement), investigation costs; cost of prejudicial actions and profit obtained 
by the infringer as a consequence of the illicit use.  
42 CSWD 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 (SEC(2010) 1589), p. 23. 
43https://euipo.europa.eu/tunnel-
web/secure/webdav/guest/document_library/observatory/documents/publications/Observatory+update+on+costs
+and+damages.pdf 
44 See "Support study…", p. 67 

15 

 
                                                            
  Rightholders'  lost  profits  can  be  difficult  to  prove  (a  high  level  of  evidence  is  required) 
and/or  their  calculation  may  lead  to  divergent  results45.  Lost  profits  can  be  difficult  to 
prove  where  infringing  activities  undermine  the  value  of  legal  sales46.  Also,  for  the 
calculation of the lost profits, it is often unclear whether the price of the original product 
or the price of the counterfeit/pirated product (which may be substantially lower in some 
cases) should be taken into account.  

  Unfair  profits:  many  Member  States  require  a  rightholder  to  prove  that  the  profits  were 

made with or as a result of the infringing products (causal link)47.  

  Damages  for  other  negative  economic  consequences  (e.g.  price  erosion,  reputational 
damage,  tarnishment  of  trade  mark,  damage  to  good-will)  and  moral  (immaterial) 
damages are rarely awarded and often cannot even be requested by the claimant, given the 
difficulty to meet the standard of proof requested48.  

The impact of a high burden of proof is further increased by the fact that in many jurisdictions 
it is  often the  court that will choose the method of calculation, i.e.  (a) taking account  of all 
appropriate aspects of the individual case or (b) setting the damages as a lump sum, and not 
the rightholder, although the rightholder will have to present the required evidence. 

At the same time a high burden of proof can lead to harm being compensated by lump sum 
damages, as less evidence tends to be required. It has been reported however that such lump 
sum damages are often limited from 1 to 5 % of the total turnover of the infringer which can 
be attributed to the infringed right (as they tend to be calculated on the basis of hypothetical 
royalties/fees).  

To summarise, the rules on damages set out in the Directive appear to have helped overall in 
effectively  protecting  IPR  and  preventing  infringements.  However,  the  level  of  damages 
awarded by the courts does not always seem sufficient to compensate for the actual prejudice 
suffered  notably  in  the online  environment.  This  is  primarily  due  to  different  application  of 
the  rules  at  national  level  (even  inside  a  given  Court,  individual  practices  by  judges  may 
vary), and different judicial traditions. 

45 "Damages in Intellectual Property Rights", European Commission, European Observatory on Infringements of 
Intellectual Property Rights, 2010 
46 Extensive infringing activities often make the branded goods lose their 'exclusivity', which leads to a decline in 
consumer  demand,  damage  to  goodwill  etc.  ("Analysis  of  the  application  of  Directive  2004/48/EC  of  the 
European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights in 
the Member States", Commission Staff Working Document, SEC(2010)1589) 
47 Indeed, infringers may sometimes make higher profits with the infringing products that 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.) 
48 "Damages in Intellectual Property Rights", European Commission, European Observatory on Infringements of 
Intellectual Property Rights, 2010 

16 

 
                                                            
5.1.1.2.5.

  REIMBURSEMENT OF LEGAL COSTS (ARTICLE 14) 

According  to  Article  14  of  the  Directive  Member  States  shall  ensure  that  reasonable  and 
proportionate  legal  costs  and  other  expenses  incurred  by  the  successful  party  shall,  as 
a general  rule,  be  borne  by  the  unsuccessful  party,  unless  equity  does  not  allow  this.  While 
this  general  principle  provides  the  national  judicial  authorities  with  the  basis  for 
reimbursement of costs, in calculating the actual amount that should be awarded the courts are 
often  bound  by  specific  national  regimes  on  calculation  of  damages  in  civil  matters.  Such 
national  regimes  are  often  not-IP  specific,  based  on  caps  and/or  refer  to  the  national  rules 
governing the minimum costs of assistance of attorneys-at-law or patent attorneys.  

Rightholders  can  incur  significant  costs  in  relation  to  the  enforcement  of  their  IPRs.  As 
indicated above, they may have to invest substantial sums to detect an infringement, identify 
the  infringer,  investigate  and  gather  evidence  of  infringement,  secure  seizure,  store  and 
eventually  destroy  infringing  goods.  Also,  because  of  the  complexity  of  the  matter,  in 
particular  in  patent  cases,  high-level  technical  expertise  can  be  needed  to  understand  the 
nature of the right and the scope of potential infringement. 

Similarly  as  in  the  case  of  damages,  respondents  to  the  public  consultation49  and  the 
Evaluation Study50 identified considerable differences in the calculation of legal costs and in 
the  decision-making  procedures  in  Member  States.  Although  the  legal  costs  awarded  by 
courts  to  the  winning  party  may  not  reflect  the  true  legal  costs  incurred,  the  available  data 
suggests indeed a significant heterogeneity between Member States.  

In addition, the reimbursement of legal costs awarded to the successful party reportedly often 
only covers a fraction of the total costs incurred and certain cost elements are sometimes not 
even considered by the court. According to the public consultation51, court fees for instituting 
proceedings and other procedural costs are often fully covered while external experts' costs, 
attorneys' charges and additional attorneys' fees are mostly only partly covered, also because 
of  caps  on  the  recoverability  of  legal  costs  in  the  respective  national  legislation.  The  vast 
majority  of rightholders  considered  the  reimbursement  of  legal  costs  insufficient.  A 
comparison of the legal costs reimbursed at national level shows a very divergent picture52. 

Member  States  and  public  authorities  indicated  in  the  public  consultation  that  mostly 
identified  attorneys'  charges,  court  fees  for  instituting  proceedings,  external  experts'  costs, 
additional  attorneys'  fees  and  other  court  costs  as  being  covered.  Half  of  the  respondents 
indicated that the reimbursement of legal costs is subject to limitations. 

Only  very  few  rightholders  consider  the  reimbursement  of  their  legal  costs  to  be  sufficient. 
The main reasons given for the perceived inadequacy of reimbursement are non-consideration 
of all the necessary litigation costs, such as in-house costs or expert fees (despite the need for 

49 See Annex II – Synopsis report. 
50 See "Support study…", p. 69 
51 See Annex II – Synopsis report. 
52 See Annex IV. 

17 

 
                                                            
specialist  knowledge  in  such  cases),  difficulty  to  quantify  the  costs  for  producing  evidence 
and  statutory  caps  on  the  amount  of  legal  costs  that  can  be  recovered.  The  low  or 
unpredictable level of cost recovery in IP litigation can deter SMEs from relying on registered 
IPR to defend their investments53. 

The  majority  of  rightholders  thus  called  for  an  adjustment  of  practices,  ensuring 
an appropriate recoverability of the actual costs, including necessary non-judicial costs, such 
as  expert  and  investigation  costs,  in  all  Member  States.  Many  comments  from  stakeholders 
referred to ensuring that rightholders are able to recover more ‘realistic’ or indeed full costs of 
IPR enforcement, including costs related to investigating and pursuing an infringement, and 
all related expenses and expert fees.  

A large majority of respondents from the  judiciary and legal  profession did  not  believe that 
the  application  of  the  provisions  on  legal  costs  have  helped  effectively  in  protecting  and 
preventing  IPR  infringements.  Some  respondents  are  of  the  opinion  that  courts  enjoy  too 
much  discretionary  power  in  granting  legal  costs,  resulting  very  often  in  insufficient 
reimbursement of costs. Respondents called for an uniform interpretation and application of 
the rules in order to enhance the level of reimbursement of costs for the winning party.  

To  conclude,  the  effectiveness  of  the  rule  established  by  the  Directive  that  reasonable  and 
proportionate  legal  costs  and  other  expenses  incurred  by  the  successful  party  shall,  as  a 
general rule, be borne by the unsuccessful party, unless equity does not allow this, is affected 
by divergent national rules laying down specific principles and caps for the reimbursement of 
such costs in civil proceedings. Because of this divergent approach taken up by the Member 
States, the Directive has not achieved a high, equivalent and homogeneous level of protection 
in the internal market in the area of reimbursement of legal costs.  

5.1.2. 

EFFECTS OF THE DIRECTIVE 

Evaluation question 2 

What have been the effects of the Directive? To what extent do those observed effects/changes 
correspond  to  the  objectives?  To  what  extent  can  those  effects/changes  be  attributed  to  the 
Directive? To what extent can those effects be linked to other EU instruments? 

The expected effects of the Directive were to have higher use of legal enforcement remedies, 
to  have  more  efficient  remedies  (in  terms  of  the  length  of  procedures  and  costs),  less 
occurrence  of  IPR  infringements  and  better  knowledge  on  IPR  enforcement  rules  (see  also 
Figure 1 with the intervention logic presented). 

In general, the following effects of the Directive have been noted by stakeholders: 

53  "Intellectual  Property  SME  Scoreboard  2016",  EUIPO,  European  Observatory  on  Infringements  of 
Intellectual Property Rights, 2016 

18 

 
                                                            
While  in  some  Member  States  only  little  change  was  noted  in  legislation  and  legal 
• 
practice, it was also said that the Directive led to considerable improvements in other Member 
States, making tools available that were not available before the Directive. 

The Directive had a direct effect on the harmonisation of laws and tools that made it 

• 
more effective to implement a single pan-European strategy for IP enforcement. 

• 
A better pan-European strategy by companies translated into effectiveness gains, since 
it opened up room to go after more IP infringement cases and/or act on IP infringement where 
otherwise no action would have been taken. 

The Directive seems to have substantially increased the interaction between judges in 
• 
different Member States. Interviews with judges suggest that they meet more often and look at 
rulings  in  other  Member  States  to  inform  themselves,  and  the  often  cross-border  or 
international characteristic seem to require national judges to be better informed about other 
Member States’ practices.  

The  Evaluation  Study  presents  data  on  number  of  court  cases  and  average  length  of 
the proceedings to assess whether the Directive had impact on the amount of civil proceedings 
taking place as well as on their length. 

According  to  the  Evaluation  Study,  although  the  number  of  court  cases  for  all  IPRs  have 
increased, this cannot be solely attributed to the adoption of the Directive. 

When comparing the situation in four selected Member States (France, the United Kingdom, 
Netherlands and Germany), the following picture emerges. The average duration of litigations 
related  to  all  IP  types  and  all  of  these  four  Member  States  is  about  one  year.  In  trademark 
court  cases,  France  and  the  United  Kingdom  are  on  average  the  Member  States  with  the 
highest  duration  of  litigations  (1.4  years),  while  for  Germany  and  Netherlands  the  average 
duration  of  the  proceedings  is  a  third  (or  less)  the  duration  of  the  cases  in  France  and  the 
United  Kingdom  (0.4  and  0.2  years  respectively).  In  patent  court  cases,  the  duration  is  the 
highest  for  all  the  four  Member  States  compared  to  the  other  two  IP  types.  France  has  the 
highest duration average of 1.8 years, followed by the United Kingdom and Germany with 1.1 
years and the Netherlands with  0.8  years. In  design  court  cases France leads  with  1.4 years 
followed by the United Kingdom with one year, Germany with 0.5 years and the Netherlands 
with 0.1 years. 

According  to  the  data  presented  in  the  Evaluation  Study,  the  preliminary  comparison  of 
the pattern  ‘before  and  after’  the  transposition  of  the Directive  shows  that  in  all  IP  types, 
across all four Member States concerned, the average duration of litigations has decreased or 
remained stable. The highest reductions are in design and patent court cases specifically in the 
United Kingdom and in patent court cases in France. 

19 

 
Figure 1 Average length of the proceedings of the court cases before and after the Directive 

k
r
a
m
e
d
a
r
t

t
n
e
t
a
p

n
g
i
s
e
d

United Kingdom

The Netherlands

Germany

France

United Kingdom

The Netherlands

Germany

France

United Kingdom

The Netherlands

Germany

France

0,0

0,5

1,0

1,5
in years 

2,0

2,5

3,0

After IPRED

Before IPRED

Source: Technopolis calculations based on Darts-ip data  

The legal analysis investigates whether the implementation of the Directive’s measures across 
the EU compared to the national laws before the Directive introduced changes in the judiciary 
systems  that  could  impact  on  the  duration.  The  focus  was  placed  on  right  of  information 
(Article 8), provisional measures (article 9), damages settlement (Article 13), provision on the 
publication of cases (Article 15).  

According to the legal analysis only, it is possible that change in delays could at least partially 
be attributed to the Directive because of the availability of measures that were not available 
before the Directive.  

It is however difficult to assess the strength of the effects since the Directive is only part of a 
broader enforcement framework. Thus, direct effects can be seen in all Member States where 
their  legal  provisions  were  changed,  while  secondary  effects  can  only  be  found  after  the 
Directive was in place and used. In this respect, one can argue that the hitherto clarification at 
CJEU  level  helped  to  overcome  some  shortcomings  (i.e.,  vague  language,  absence  of 
definitions)  and  triggered  more  communication  among  judges  across  the  MS.  This  may 
further enhance national rulings and may also lead to further harmonisation in the application 
of the Directive’s provisions.  

Thus,  the  evolution  of  court  cases  and  their  specific  provisions  do  not  find  effects  of  the 
Directive  on  statistically  measurable  characteristics  of  civil  enforcement  of  IP  in  Europe 
overall. This is in line with the feedback from the interviews.   

20 

 
 
The  econometric  models  for  the  most  part  did  not  unveil  strong  correlations  between  the 
introduction of the Directive and the development of key indicators on litigation activity – let 
alone causality. Together with the interview evidence, it appears that the Directive had only 
marginal significant effects on IP litigation activity in Europe54. 

5.1.3.  MAIN  FACTORS  THAT  SUPPORT  OR  HAMPER  ACHIEVING  THE 

OBJECTIVES 

Evaluation question 3  

What  are  the  main  factors,  e.g.  in  the  formulation  but  also  the  implementation  and 
application of the rules, that support or hamper achieving these objectives55? To what extent 
have  the  different  measures,  procedures  and  remedies  provided  for  by  the  Directive  been 
complemented by non-legislative interventions at EU and national level, including voluntary 
stakeholder initiatives? 

According  to  the  Evaluation  Study  and  as  analysed  above  when  examining  the  extent  to 
which the different measures provided for by the Directive are affecting its effectiveness,, the 
issues which hamper the achievement of the Directive seem to be often in the sphere of the 
(lack of precise) formulation of some key notions in the Directive as well as, according to the 
stakeholder opinions, the actual application of the Directive in the Member States.  

The concerns with the formulation mainly focus on two areas: involvement of intermediaries, 
and scope of injunctions. 

The  differences  in  implementation  are  often  linked  to  specifics  of  certain  Member  States, 
industries  and/or  certain  IP  rights,  as  well  as  the  way  how  the  general  civil  enforcement 
functions in the Member States. These differences have been highlighted under question 2. 

Intermediary 

The formulation of the notion of intermediary is a factor leading to  potential differences on 
the Member States' level. This notion is interpreted in various ways so as to include different 
entities, ranging from different types of online service providers to carriers, shipping agents, 
postal service providers, etc. The Evaluation Study has showed that different interpretation is 
due  to  the  fact  that  most  Member  States  do  not  precise  who  qualifies  as  an  “intermediary” 
with only some (e.g. FI, CZ) attempting to provide a definition of this term.56 However, even 
in  the  absence  of  a  formal  definition,  the  notion  of  intermediary  seems  to  be  similarly 
perceived across the EU 28.  

54 See "Support study…", p. 84 
55 The main objectives of the Directive for this purpose are: 1) Achieving the internal market for IPR 2) Promote 
investment  in  innovation  and  business  competitiveness  3)  Ensuring  fair  and  equal  competition  4)  Preserving 
employment in Europe 5) Preventing tax losses and market destabilisation 6) Ensuring consumer protection. 
56 See "Support study…", p. 60 

21 

 
 
                                                            
Under Articles 9 and 11 of the Directive the intermediary may be ordered to take measures 
aimed  at  bringing  infringements  of  intellectual  property  rights  to  an  end,  and  at  preventing 
further infringements. In this respect, intermediaries implemented various policies against the 
infringers,  such  as  take-down  notices57,  sanctions  implemented  in  their  policies  and  other 
tools aiming at eliminating the illegal offers.  

In  Sweden,  for  instance,  the  law  does  not  distinguish  between  different  types  of 
intermediaries.  However,  regarding  ISPs  whose  services  are  being  used  by  a  third  party  to 
infringe  an  IPR,  the  law  is  somewhat  unclear.  In  one  case  a  hosting  service  provider  was 
considered  responsible  for  contribution  to  the  infringements  carried  out  by  the  users  of  a 
platform by providing it with access to the internet, whereas in another case it was ruled that 
in  order  to  obtain  an  injunction  against  an  online  intermediary  it  is  not  sufficient  that  the 
intermediary merely provides access to the internet without also providing some sort of direct 
assistance to the primary infringers.  

Scope of injunctions 

The  formulation  of  the  scope  of  the  injunctions  is  another  hampering  factor  emerging  from 
the Evaluation Report and contacts with stakeholders. Most Member States provide the court 
with the ability to issue orders against future infringement.58 Hence, the injunction may order 
the recall and/or removal from all chains of commerce of the infringing products as well as of 
the materials, tools, or equipment intended for or used during the infringement. In this sense, 
the  injunction  can  be  prohibitory  or  ordering:  prohibitory  injunctions  prohibit  the  infringer 
from  producing  or  selling  the  infringing  product  or  service,  whereas  ordering  injunctions 
order the infringer to call back, destroy, or hand over infringing products. 

Despite  the  differences  in  the  Member  States  concerning  the  requirements  in  particular 
concerning injunctions against intermediaries issued under the Directive, injunction measures 
are important for their respective legal systems. Some Member  States (e.g. DK, SI, EL, IT) 
mention  that  rightholders  often  rely  on  precautionary/provisional  measures  as  their  primary 
enforcement  remedy;  in  some  Member  States  (e.g.  IT  and  DE)  ex  parte  injunctions  can 
usually be obtained within a few days, and are reportedly the most effective remedies.  

Cross-checking  with  the  available  darts-ip  data59  on  preliminary  injunctions,  the  Evaluation 
Report identified different patterns. Given that in Italy an interlocutory injunction is available 
whenever an IP infringement is ongoing or imminent, irrespective of the degree of urgency of 
the matter, there is no requirement on rightholders to file their requests within a short time of 
becoming aware of the actual or threatened infringement. It may come to no surprise that Italy 
has the highest number of preliminary injunctions over the 2005-2015 period (almost 1.400). 

57  Such  procedures  are  also  relevant  in  view  of  the  liability  regime  of  Articles  12-15  of  the  E-Commerce 
Directive 
58 See "Support study…", p. 62 
59 Darts-ip is a private firm which collects court cases information for the EU-MS and beyond. It was used in 
order to overcome the lack of quantitative data, to obtain more insights on the enforcement of IPR as provided 
for by the Directive. 

22 

 
                                                            
Thus, in approximately 46% of all Italian cases a preliminary injunction has been used. The 
Netherlands  come  second  with  about  770  cases  which  in  turn  form  a  share  of  51%  of  all 
Dutch cases. In Germany and France, preliminary injunction requests are in 12% and 5.3% of 
the  German  and  French  cases  respectively.  Among  the  Member  States  with  lower  absolute 
case numbers, requests for preliminary injunctions enjoy a high share such as in Cyprus (75% 
-  21  cases)  and  Slovakia  (40%  -  64  cases).  In  Ireland  and  Latvia,  on  the  other  hand,  this 
measure is not used at all.  

Lack of sanctions for non-compliance 

The  measures,  procedures  and  remedies  provided  for  by  the  Directive  are  only  effective  if 
their  addressees  also  actually  implement  them.  It  is  therefore  important  that  there  are 
measures  available  which  aim  to  ensure  compliance  with  court  orders  made  for  instance 
regarding  evidence,  the  right  of  information  and  injunctions.  It  appears  however,  that 
sanctions  for  non-compliance  with  the  measures,  procedures  and  remedies  are  not  always 
sufficiently deterrent: 

  For  some  Member  States  (e.g.  Lithuania,  Hungary)  the  sanctions  for  failing  to  comply 
with  orders  regarding  evidence  and  the  right  of  information  are  reported  to  be  not 
dissuasive.  In  Poland,  there  are  reportedly  no  sanctions  imposed  on  the  defendant  who 
fails to comply – only a third party or a witness. By contrast in some other Member States 
(Greece,  Italy,  Malta,  Spain),  a  failure  on  the  part  of  the  defendant  to  produce  required 
documents enables the court to draw an inference regarding the facts to be proven, which 
provides a strong incentive for the defendant to produce the required documents. In some 
Member States, the court has a general power to impose sanctions that are appropriate in 
the  circumstances.  For  example  in  Denmark,  Cyprus  and  the  UK,  the  court  can  impose 
fines and, following proceedings for contempt of court, impose imprisonment.60  

  For  injunctions  significant  disparities  between  the  laws  of  the  Member  States  appear  to 
exist regarding the sanctions in place for failing to comply with provisional/precautionary 
measures. In most Member States, it is possible to obtain an interlocutory injunction that 
requires  the  alleged  infringer  or  intermediary  to  pay  a  penalty  if  the  infringement 
continues. However, this is impossible in several Member States. In some Member States, 
maximum  fines  of  €  290,  or  even  €  100  (or  €  200  in  the  case  of  a  repeated  failure  to 
comply with the order), have been reported.61 

Specialised judiciary 

As regards factors that had a positive contribution to achieving the objective of the Directive, 
several  stakeholders  pointed  out  in  particular  to  the  existence  of  specialised  judiciary62. 

60  "Evidence  and  right  of  information  in  intellectual  property  rights",  European  Commission,  European 
Observatory on Infringements of Intellectual Property Rights, 2010 
61  "Injunctions  in  intellectual  property",  European  Commission,  European  Observatory  on  Infringements 
of Intellectual Property Rights, 2011 
62 See "Support study…", p. 93 

23 

 
                                                            
Irrespective  of  the  type  of  IPR  at  issue  –  or  whether  interviewee  had  a  history  of  being 
defendants  or  plaintiffs  in  IPR  enforcement  cases,  or  whether  it  is  a  SME  or  a  large  firm  – 
there  was  overwhelming  support  for  specialisation  as  decisive  factor  for  efficient  and 
effective IPR enforcement. The advantages of specialised judges were seen primarily in terms 
of  predictability.  More  consistent  decisions  could  lead  to  greater  legal  certainty  and  a  more 
efficient civil court system. 

Experienced  judges  were  considered  faster  and  therefore  more  efficient  in  assessing  a  case 
(i.e.,  the  time  needed  to  spend  on  a  case  would  be  less;  according  to  an  estimate  some 
efficiency  gains  would  be  around  50%).This  translates  into  higher  speed,  more  usage  of  IP 
enforcement  proceedings  when  necessary  and  fewer  costs.  It  was  also  seen  as  a  deterrent 
against abuse, as a specialised judge could be quicker to dismiss “frivolous claims”. 

Voluntary stakeholders' initiatives 

Article 17 of the Directive is concerned with the encouragement of codes of conduct. As for 
such  voluntary  stakeholders'  initiatives,  the  level  of  engagement  and  efficiency  of  existing 
schemes  at national level varies  significantly63.  The feedback on national soft law measures 
like  memoranda  of  understandings  between  intermediaries  and  rights  holders  is  mixed 
according  to  many  stakeholders.64  While  this  initiative  is  generally  perceived  beneficial  to 
support  better  enforcement  of  IPR,  there  are  certain  doubts  as  to  expected  utility  and 
effectiveness. There was a consensus that memoranda of understandings cannot substitute the 
Directive but rather acts as a complementary instrument. 

At the EU level, the Memorandum of Understanding65 on the online sale of counterfeit goods 
entered into force in 2011 and further memoranda are being discussed. There is a consensus 
among  stakeholders  that  cooperation  agreements  between  rightholders  and  intermediary 
service  providers  can  be  a  significant  complementary  route  to  the  legislative  framework. 
Rightholders and intermediaries signed up to an agreement on a set of guiding principles and 
rules  aimed  at  identifying  and  disrupting  the  revenue  that  commercial  scale  IP  infringing 
websites obtain through online advertising.  

5.1.4.  CONSEQUENCES OR EFFECTS NOT ORIGINALLY PLANNED 

Evaluation question 4 

What  are  the  consequences  or  effects  (both  positive  and  negative)  that  were  not  originally 
planned? 

The planned effects of the Directive are analysed in details under question 2. 

63https://euipo.europa.eu/tunnel-
web/secure/webdav/guest/document_library/observatory/documents/Research%20and%20sudies/study_voluntar
y_collaboration_practices_en.pdf  
64 See "Support study…", p. 116 
65  Memorandum  of  Understanding  on  the  sale  of  counterfeit  goods  via  the  Internet,  available  at 
http://ec.europa.eu/DocsRoom/documents/18023/attachments/1/translations/ 

24 

 
 
 
                                                            
The analysis indicates overall that no major unplanned effects were detected.  The following 
point was however raised in this context: 

Abusive litigation 

A recent study by the JRC66 from 2016 indicates that patent assertion has become a common 
practice in shaping the balance between technology creation and technology dissemination in 
the  ICT  industry  in  Europe.  The  importance  of  this  practice  for  the  functioning  of  ICT 
markets  has  given  rise  to  new  entities  that  enforce  patents  but  do  not  utilise  the  patented 
technology,  commonly  referred  to  as  patent  assertion  entities  (PAEs).  The  study  concludes 
that  the  institutional  and  legal  framework  in  Europe  has  not  allowed  the  more  negative 
consequences associated with PAEs to materialise to the same extent that it has, according to 
some economic literature, in the US.  

Some stakeholders have reported the potential abuse of rules on evidence (Articles 6 and 7) in 
patent-related matters to get hold of confidential business information as a potential negative 
effect of the Directive. This practice of "fishing expeditions" however could not be quantified 
apart from allegations by some actors. 

CONCLUSIONS 

The  Directive's  rules  have  helped  effectively  in  protecting  IP  and  preventing  IPR 
infringements.  The  Directive  also  provides  effective  means  for  facilitating  the  civil 
enforcement of IPRs. It established a common legal framework, where the same set of tools 
can be applied across the EU. In this respect, it has achieved the objective of approximating 
the  legislative  systems  of  the  Member  States  for  the  civil  enforcement  of  IPR,  thereby 
generally  ensuring  a  high,  equivalent  and  homogeneous  level  of  protection  in  the  internal 
market.   

The analysis of the application of the measures, procedures and remedies provided for by the 
Directive at national level however shows a significant divergence between Member States in 
applying the relevant provisions which in turn affect the Directive's effectiveness. The reason 
for  such  divergence  is  both  the  different  interpretation  of  the  Directive's  provisions  at 
national  level  and  the  divergent  legal  traditions  of  Member  States,  which  are  reflected  in 
different national civil procedural rules. As to the latter, the Directive's measures, procedures 
and remedies are embedded into the general civil procedural law framework – and the lack of 
effectiveness of the Directive in some respects is caused by factors outside the scope of the 
Directive.  

For  SMEs,  costly  and  complicated  judicial  procedures  may  be  an  important  deterrent 
stopping them from actively defending their assets. 

66https://publications.europa.eu/en/publication-detail/-/publication/18fbdb72-9a87-11e6-9bca-
01aa75ed71a1/language-en    

25 

 
                                                            
 
5.2. EFFICIENCY 

The  functioning  of  the  Directive  in  terms  of  efficiency  was  assessed  on  the  basis  of  the 
following evaluation questions: 

5) What are the costs and benefits associated with the implementation and application of the 
Directive? To what extent are they proportionate? 

6) To what extent, have the different measures, procedures and remedies provided for by the 
Directive been  efficient means of  ensuring the enforcement of  IPRs? What  factors  influence 
the efficiency of the different measures, procedures and remedies? 

7) How affordable were the costs borne by different addressees for the measures, procedures 
and remedies provided for by the Directive? Are they proportionate to the benefits achieved? 

8)  If  there  are  significant  differences  in  costs,  length  of  procedure  or  other  necessary 
resources invested between Member States, what is causing them? 

5.2.1. COSTS AND BENEFITS 

Evaluation question 5  

What  are  the  costs  and  benefits  associated  with  the  implementation  and  application  of  the 
Directive? To what extent are they proportionate? 

5.2.1.1. COSTS  

The costs of the implementation of the Directive 

The  Directive  approximates  the  legislation  of  the  Member  States  in  the  field  of  civil 
enforcement  of  IPR.  The  Directive  required  Member  States  to  transpose  its  provisions  into 
their  national  laws  and  thus  to  make  available  to  applicants  the  Directive's  measures, 
procedures and remedies for the enforcement of IPR. The Directive does not require Member 
States  to  establish  specific  administrative  procedures  or  infrastructures.  The  Directive  does 
not provide for any market monitoring arrangements or reporting obligations to be fulfilled by 
the  Member  States  or  any  of  the  private  parties  concerned.  Stakeholders  (rightholders  and 
intermediaries)  during  the  public  consultation  did  not  indicate  any  administrative  costs  in 
relation to the implementation of the Directive.  

The costs of the application of the Directive 

Rightholders,  both  small  and  large  companies,  use  the  following  resources  to  detect  and 
combat infringements of their IPR: 

  cost  of  employee  time  dedicated  to  IPR  enforcement  (for  activities  such  as  market 

monitoring and identification of infringements); 

  cost of external legal assistance; 
  court fees in connection with infringement-related litigation; 

26 

 
 
  storage and destruction costs; 
  other infringement-related costs. 

Overall, the average EU company that aims to protect its IP spends EUR 115 317 per year on 
enforcement-related activities, with a wide variation, depending on company size. In the case 
of small companies (i.e. those with fewer than 50 employees), the average outlay is EUR 83 
653  per  year.  For  medium-sized  companies  (those  with  50  to  250  employees),  the  figure  is 
EUR  103  166.  Finally,  for  large  companies,  those  with  more  than  250  employees,  the 
enforcement costs amount to EUR 159 132 per year.67 

Some  of  these  costs  are  related  to  the  application  of  the  Directive.  The  Directive  provides 
measures, procedures and remedies for the enforcement of IPR in civil law proceedings. The 
costs  of  the  practical  application  of  the  Directive  therefore  overlap  with  the  costs  for  civil 
justice  and  civil  litigation.  The  basic  elements  of  the  quantifiable  costs  of  litigation  are  the 
same in every jurisdiction: 

  Charges for use of the courts, including associated officers, bailiffs; 
  Evidential costs: witnesses, experts; 
  Lawyers’ fees.68 

These costs divide into administrative/court fees (the costs of civil litigation for the applicant: 
court  and  lawyer  fees)  and  substantive  compliance  costs  (preparation  of  a  legal  action, 
meeting the requested level of evidence) for the applicant, substantive compliance costs (costs 
of  compliance  with  the Directive  measures)  for  the  unsuccessful  party and  possible  indirect 
costs  due  to  the  wider  impact  of  the  Directive  measures,  procedures  and  remedies  (e.g. 
injunctions). 

However, not all of these costs can be attributed directly  to the application of the Directive. 
The  key  types  of  costs  that  affect  an  applicant's  decision  to  litigate  are  the  legal  costs  of 
bringing the action (administrative/court fees and the costs of legal and expert services). For 
the applicant, the administrative/ court fees and substantive compliance costs are use-based. 
These  costs  only  occur  if  a  rightholder  is  applying  for  a  Directive  measure,  procedure  or 
remedy  in  civil  court  proceedings.  The  Directive  itself  however  does  not  impose  any 
administrative or compliance costs on the applicant. The costs of bringing legal action and the 
preparation of legal action derive primarily from the general rules and procedures for the use 
of the civil justice system in a Member State, not from the Directive.  

The Evaluation Study69 concluded that the Directive has not imposed any incremental direct 
costs on the applicant compared to the period before the date of transposition of the Directive, 
either  in  terms  of  administrative  costs  or  substantive  compliance  costs.  In  that  respect  the 

67  "Private  costs  of  enforcement  of  IPR",  EUIPO,  European  Observatory  on  Infringements  of  Intellectual 
Property Rights, 2017; based on a survey of 1 291 companies in 14 EU Member States (these Member States 
account for 90 % of all companies in the EU). 
68 "Costs and Funding of Civil Litigation: A Comparative Evaluation Study", Hodges, Vogenauer and Tulibacka, 
University of Oxford Legal Research Paper Series, 2009. 
69 See "Support study…",  p.  94 

27 

 
                                                            
Evaluation  Study  also  found  that  there  is  no  statistically  significant  correlation  between  the 
implementation  of  the  Directive  and  the  number  of  IPR  court  cases  and  between  the 
implementation of the Directive and the average duration of IP litigation cases (except for the 
average  duration  of  patent  cases,  which  decreased).  The  application  of  the  Directive  has 
therefore also not led to additional costs for applicants related to longer court proceedings.  

According  to  the  Evaluation  Study,  the  operating  costs  of  intermediaries  also  cannot  be 
directly  attributed  to  the  Directive.  The  large  intermediaries  argued  that  they  had  already 
processes  in  place  for  IP  rightholders  to  record  an  infringement  (notice  and  take  down 
process)  and  obtain  data  that  would  allow  them  to  enforce  their  IPR  against  the  primary 
infringer. It should also be noted that investments made by intermediaries would need to be 
assessed considering at least the e-Commerce Directive (2000)70 and the Information Society 
Directive  (2001)71,  which  came  into  force  before  the  IPR  Enforcement  Directive  (2004). 
Moreover,  companies’  corporate  responsibility  is  another  important  driver  and  can  vary 
greatly from intermediary to intermediary – there is credible feedback that the intermediaries 
interviewed  have  a  high  degree  of  self-interest  to  be  perceived  as  a  “serious  and  reliable” 
platform  by  their  customers  and  end-users,  an  image,  which  would  be  in  jeopardy  if  they 
allowed an abuse of their  platform for the offering of counterfeit and pirated  goods. This  is 
particularly  true  where  the  customers  can  be  victims  of  the  illegal  activity  (i.e.  purchase  of 
fake medicine or fashionable bag). 

5.2.1.2. BENEFITS  

Concerning benefits, the intervention logic supporting the Directive is that the approximation 
of the measures, procedures and remedies necessary to ensure the enforcement of IPR results 
in  better and  faster  access  to  justice,  better  protection  of  IPR  in  particular  in  a  cross  border 
context,  reduction  of  IPR  infringements  and  in  an  elimination  of  disparities  in  the  existing 
national systems for civil enforcement of IPR.  

The  main  objective  of  the  Directive  was  indeed  to  provide for  a  minimum  set  of  measures, 
procedures and remedies, and limit the disparities between the systems of the Member States 
as  regards  the  means  of  enforcing  IPR,  thus  ensuring  a  high,  equivalent  and  homogeneous 
level  of  protection  in  the  internal  market.  This  results  in  direct  and  indirect  efficiency 
improvements for the parties involved.  

According to the Evaluation Study72, the majority of stakeholders were of the opinion that the 
Directive provided for additional tools in the hands of rightholders to litigate in case of IPR 
infringement  and  accomplished  a  more  harmonised  enforcement  framework  in  the  EU 

70 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 (Directive on electronic 
commerce), OJ L 178, 17.07.2000. 
71 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of 
certain aspects of copyright and related rights in the information society, OJ L 167, 22.06.2001. 

72 See "Support study…", p. 102 

28 

 
                                                            
 
Member  States.  The  harmonisation  of  the  measures,  procedures  and  remedies  necessary  to 
ensure  the  enforcement  of  IPR  allows  to  assess  an  infringement  case  across  various 
jurisdictions and to employ similar legal tools in different Member States. The possibility of a 
pan-European enforcement strategy translates into efficiency gains and possible cost savings 
(e.g. fewer resources to coordinate, prepare and implement IP enforcement action in the EU or 
more legal action with the same resources, streamlining of monitoring activities). 

However,  on  the  basis  of  the  available  data,  it  is  not  possible  to  provide  a  comprehensive 
quantitative  description  of  these  benefits.  The  econometric  modelling  analysis  employed  in 
the  Evaluation  Study73  concludes  that  possible  benefits  cannot  be  attributed  directly  to  the 
Directive. There is no quantitative evidence indicating either a positive or negative trend due 
to the Directive.  

An indirect benefit from the implementation and application of the Directive could be seen in 
the enhanced sharing of knowledge and good practice in the area of civil enforcement of IPR 
between  Member  States,  in  particular  between  national  judges.  The  Evaluation  Study  has 
shown that with the transposition of the Directive the interaction between judges in different 
Member  States  has  substantially  increased.  Judges  meet  more  often  and  look  at  rulings  in 
other Member States to inform themselves. While the Directive does not require meetings of 
judges  a  growing  awareness  of  enforcement  legislation  and  the  often  cross-border  or 
international characteristic seem to require national judges to be better informed about other 
Member States’ practices – arguably leading to higher quality judgements. 

The  fact  that  interlocutory  and  permanent  injunctions  can  also  be  applied  for  against 
“intermediaries  whose  services  are  used  by  a  third  party  to  infringe  an  intellectual  property 
right”  might  have  motivated  intermediaries  to  engage  more  proactively  in  the  protection  of 
IPR, to avoid being the addressee of court injunctions. The number of voluntary cooperation 
agreements  between  rightholders  and  intermediaries  aiming  at  the  identification  and 
prevention of IPR infringements through the use of intermediary services is growing. At the 
same time this development has again to be assessed also in light of the relevant obligations 
set out in relation to certain categories of intermediaries in the e-Commerce Directive and the 
Information Society Directive in the case of copyright. 

The Directive itself includes a reference in its recitals saying that the "Directive respects the 
fundamental  rights  and  observes  the  principles  recognised  in  particular  by  the  Charter  of 
Fundamental  Rights  of  the  European  Union".  The  application  of  the  Directive,  and  the 
interpretation  of  the  Directive  by  the  CJEU  in  preliminary  reference  proceedings  following 
from  this  application,  has  certainly  helped  to  clarify  the  relationship  between  the  different 
fundamental rights concerned by the enforcement of IPR.  

The results of the EUIPO sectorial studies on the scope, scale and impact of IPR infringement 
in EU74 and the recent study by the OECD and the EUIPO75 indicate that, despite the adoption 

73 See "Support study…", p.  101 
74 https://euipo.europa.eu/ohimportal/en/web/observatory/quantification-of-ipr-infringement  

29 

 
                                                            
and  application  of  the  Directive,  illicit  trade  is  not  disappearing  and  that  counterfeiting  and 
piracy is still on the rise, impacting all market segments. 

5.2.1.3. OVERALL COST/BENEFIT RELATIONSHIP 
The Evaluation Study76 finally provides for a general cost-benefit analysis. With little to no 
changes to the cost situation, but with principal improvements brought by the Directive even 
if public consultation feedback was not able to pinpoint costs attributable to the Directive, the 
overall  perception  was  that  the  benefits  outweigh  the  costs.  Therefore,  the  Directive  can  be 
seen  as  a  useful  and  necessary  piece  of  legislation  to  harmonise  IPR  enforcement  across 
Europe. 

5.2.2. EFFICIENCY OF THE DIFFERENT MEASURES 

Evaluation question 6 

To what extent, have the different measures, procedures and remedies provided for by the 
Directive been efficient means of ensuring the enforcement of IPRs? What factors influence 
the efficiency of the different measures, procedures and remedies? 

The  efficiency  analysis  of  the  different  measures  depends  again  very  much  on  the  cost 
effectiveness  of  a  measure  in  a  particular  Member  State.  A  number  of  measures  have  been 
discussed  already  under  the  effectiveness  criteria.  The  efficiency  of  measures  on  evidence, 
damages,  legal  costs,  is  questionable  in  view  of  the  costs  they  generate  for  rightholders  to 
enforce  their  rights,  notably  burden  of  proof  (notably  for  evidence),  legal  costs,  or  the 
insufficient  amount  of  damages  awarded  (see  section  5.1.1.2).  Other  than  lost  profits, 
rightholders may not in practical terms always be compensated for other negative economic 
consequences resulting from an infringement77.  

5.2.3.  AFFORDABILITY AND PROPORTIONALITY 

Evaluation question 7 

How affordable were the costs borne by different addressees for the measures, procedures 
and remedies provided for by the Directive? Are they proportionate to the benefits achieved?  

75https://euipo.europa.eu/tunnel-
web/secure/webdav/guest/document_library/observatory/documents/Mapping_the_Economic_Impact_study/Ma
pping_the_Economic_Impact_en.pdf 
76 See "Support study…", p. 101 
77 
48cf-870b-9ed1139d917a  

https://euipo.europa.eu/ohimportal/documents/11370/80606/Damages+in+intellectual+property+rights/b0d70979-2af3-

30 

 
 
 
 
                                                                                                                                                                                          
Affordability  

Affordability is a problem especially for SMEs regardless of the type of IP. This finding is in 
line with inputs from the public stakeholder consultation as well as the survey results from the 
SME scoreboard78. While this finding seems simple and the remedies straightforward (make 
the enforcement of IPR easier, so SMEs can better access the system), the problem is far more 
complex. This is due to the fact that SMEs may find themselves not only in the position of a 
rightholder enforcing a right (as the applicant), but also on the defendant side. Allowing for 
easier  enforcement  may  help  therefore  SME  acting  as  applicants,  but  may  have  negative 
consequences for SME acting as defendants. 

The  SMEs  interviewed  –  both  the  ones  defending  and  the  ones  who  could  or  were  actually 
enforcing  their  rights  –  saw  “affordability”  actually  almost  as  a  prohibitive  factor  in  their 
particular business contexts (still, all opted for the existence of IPR and good ways to enforce 
IPR).  One  of  the  credible  suggestions  to  tackle  this  issue  was  the  existence  of  specialised 
judges which could quickly judge validity and infringement. 

Illustrative  case  studies  come  from  the  telecommunication  sector.  An  SME  filing  for  a 
preliminary injunction in Spain against 10 different infringing companies has been asked for 1 
million euro deposit. While this was proportionate to the turnover of the accused companies, 
it constituted the yearly turnover of the SME in case. In a similar case another SME has been 
granted  an  injunction  in  Germany,  but  applying  it  before  an  appeal  case  required  a  deposit 
higher  than  a  million  euro.  Again  while  this  was  proportionate  to  the  value  of  the  case  it 
seems  disproportionate  in  relation  to  the  turnover  of  the  SME.  This  indicates  that  growing 
SMEs that  have  valuable IP might  have  difficulties in  enforcing their  rights  as  their current 
financial strengths is below the potential of their valuable IP.  

For SMEs acting as defendants the legal costs of the cases (see section 5.2.4 for illustration) 
can be high, again in proportion to their turnover, and not easily predictable. This may push 
such  SMEs  to  settle  on  conditions  that  are  strongly  unfavourable  for  them  just  to  avoid  the 
risk  of  starting  a  legal  battle.  This  is  an  issue  that  9%  of  surveyed  SMEs  have  suffered 
mentioning that they have been "IP bullied"79. 

According  to  the  Evaluation  Study80,  the  affordability  problem  seems  less  of  an  issue  for 
larger firms,  where  the question seems to  be more whether the use of a particular Directive 
remedy has in principle the chance to succeed or not. 

Affordability depends also very much on the general costs of the legal system in the Member 
States (which means that this may be again an issue of national legal traditions and procedural 
law, rather than a factor which the Directive directly influences) 

78 IP SME scoreboard, EUIPO 2016 
79 IP SME scoreboard, EUIPO 2016 
80 See "Support study…", p.  104 

31 

 
 
                                                            
5.2.4. NATIONAL DIFFERENCES 

Evaluation question 8 

If there are significant differences in costs, length of procedure or other necessary resources 
invested between Member States, what is causing them? 

The data and the interview evidence show that there are indeed considerable differences in 
costs and length of procedure. 

Costs 

The issue of costs has already been addressed under point 5.2.1.1. 

Average legal costs awarded can be as high as € 300,000 on average for patents in the UK, or 
€  150,000  for  trademark  cases.  This  is  indicative  for  typically  high  legal  costs  in  the  UK, 
which are said to be considerably larger than, for example, in Germany. 

The study of the French Ministry81 also provides for an estimate of the legal costs in view of 
the complexity of the case, ranging from 85 000 Euros for a 'simple' litigation case in France 
to 5 M Euros for a complex case in the UK.  

A  study  made  in  the  context  of  the  preparation  of  the  Unified  Patent  Court  gives  also  an 
approximation of the incidence and cost of patent litigation for European patents in DE, FR, 
NL and the UK and highlights the crucial aspect of heterogeneity of the costs of litigation82. 

Length of procedure 

The different length of procedures has already been addressed in detail under point 5.1.2. 

According  to  the  interviewees,  such  differences  are  mainly  due  to  national  legal  traditions 
and,  reflecting  (again)  the  specific  ways  general  national  civil  enforcement  rules  and 
procedures  interact  with  the  rules  of  the  Directive.  Different  requirements  to  apply  certain 
instruments  of  the  Directive  (e.g.  when  and  under  what  detailed  conditions  preliminary 
injunctions  can  be  provided)  and  the  existence  of  specialised  courts  are  examples  of  causes 
explaining these variations.  

In conclusion, despite a limited amount of evidence, the Directive can be considered to have 
been  a  cost-efficient  and  beneficial  intervention.  It  has  not  created  administrative  burden  or 
significant compliance / implementation costs for either stakeholders or Member States. The 
Directive has helped to bring about more harmonisation across the EU MS and it provides for 

81  Fidal  (2014):  Comparative  Study  on  damages  allocated  in  the  framework  of  counterfeiting  procedures  in 
http://www.entreprises.gouv.fr/files/files/directions_services/etudes-et-
France,  UK 
statistiques/etudes/dommages-interets-dans-actions-en-contrefacon.pdf 
82 http://ec.europa.eu/internal_market/indprop/docs/patent/studies/litigation_system_en.pdf 

and  Germany”, 

32 

 
 
                                                            
a  common  set  of  tools  in  the  hands  of  the  stakeholders  to  litigate  against  IPR  infringement 
across EU. However, efficiency is noted to be weakened mainly due to different national civil 
law traditions. 

In the case of SMEs, allowing for an easier enforcement might not be the best solution as, on 
the one hand, it may help those SMEs acting as applicants, but on the other hand it may have 
negative consequences for those firms acting as defendants. 

5.3. RELEVANCE 

The functioning of the Directive in terms of relevance has been assessed on the basis of the 
following evaluation questions: 

9) To what extent do the objectives of IPRED (still) correspond to the needs of stakeholders, 
including holders of IPRs? 

10) To what extent have the measures, procedures and remedies provided for by IPRED been 
relevant to meet the objective of ensuring the enforcement of intellectual property? In view of 
the development of the digital environment, to what extent are the measures, procedures and 
remedies provided for by IPRED still relevant for achieving the objectives of IPRED or have 
other approaches currently not provided for by the Directive become more important? 

11) Have there been developments since the entering into force of the Directive, in particular 
with  regard  to  the  development  of  the  digital  environment  and  technology  in  general,  that 
contributed to achieving the objectives? 

5.3.1. OBJECTIVES AND STAKEHOLDER NEEDS 

Evaluation question 9 

To  what  extent  do  the  objectives  of  the  Directive  (still)  correspond  to  the  needs  of 
stakeholders, including holders of IPRs? 

Rightholders  have  an  interest  in  effective  and  efficient  means  of  enforcement  of  IPR,  for 
which a functioning Directive harmonising enforcement procedures across Europe is seen as 
essential.83  This  is  supported  by  their  call  to  ensure  a  uniform  interpretation  of  certain 
provisions of the Directive, such as on the right of information, damages or the calculation of 
legal costs (see effectiveness section above) and by the growing number of IP infringements. 

The  evaluation  report  indicates  that  the  overall  relevance  of  the  objectives  of  the  Directive 
still corresponds to the needs of all stakeholders.84 This is reflected in several ways: 

83 See "Support study…", p. 106 
84 See "Support study…", p. 106 

33 

 
 
                                                            
•  Statements regarding the recognition that IPR infringement is an important and significant 
phenomenon  that  needs  to  be  tackled,  in  line  also  with  studies  on  the  extent  of 
counterfeiting and piracy activity. 

•  The  overall  response  and  media  coverage  concerning  the  public  consultation  on  the 

Directive, but also of IPR enforcement topics in general. 

5.3.2. RELEVANCE OF THE DIFFERENT MEASURES 

Evaluation question 10 

To  what  extent  have  the  measures,  procedures  and  remedies  provided  for  by  the  Directive 
been relevant to meet the objective of ensuring the enforcement of intellectual property?- In 
view  of  the  development  of  the  digital  environment,  to  what  extent  are  the  measures, 
procedures  and  remedies  provided  for  by  the  Directive  still  relevant  for  achieving  the 
objectives  of  the  Directive  or  have  other  approaches  currently  not  provided  for  by  the 
Directive become more important?  

Within  the  Directive,  the  different  measures  and  remedies  can  be  ranked  according  to 
relevance  for  enforcing  IPR.  According  to  the  Evaluation  Study85,  they  could  be  ranked  as 
follows: 

  The  most  important  measure  –  and  also  the  one  that  was  most  intensely  discussed  by 

stakeholders – was preliminary injunctions. 

  This was followed by (and most of the time coupled to) the measures relating to the right 

of information or to evidence. 

  Ranking third, and seemingly less relevant than the remedies ranked first and second, are 

the provisions regarding damages and legal costs. 

  Very  few  comments  were  received  with  respect  to  the  provisions  regarding  publication. 

These were considered as the least relevant. 

Preliminary injunctions 

The rationale behind the first ranking is seen in the fact that preliminary injunctions are the 
most powerful tool, as they have, on a provisional basis, direct and effective consequences for 
the opposing party. This can be especially necessary as it can take some time until the matter 
is resolved in proceedings on the merits of the case. Even the threat of preliminary injunctions 
may in certain cases be enough to bring (alleged) IPR infringers to the negotiation table, so 
that  litigation  may  not  be  necessary  (or  –  if  litigation  is  started  –  it  will  not  be  brought  to 
conclusion, because the parties settle out of court). 

85 See "Support study…", p. 107 

34 

 
 
 
 
                                                            
Right of information / evidence 

According to the Evaluation Study86, the right of information and the rules on the presentation 
and  preservation  of  evidence  are  often  relevant  in  practice  as  pre-requisite  to  issue  an 
injunction. Issues on obtaining information are discussed in more details in the effectiveness 
section. 

Damages, legal costs 

The  reason  why  damages  do  not  seem  to  play  much  of  a  role,  at  least  for  the  majority  of 
stakeholders – even if the difficulties assessing damages are catered for  – lies in the overall 
objective of rightholders to consider the future and stop infringement, rather than looking to 
the  past  and  try  to  obtain  a  damages  award.87  See  also  section  on  effectiveness  for  more 
details.  Apart  from  the  problems  assessing  the  level  of  damages,  there  is  also  the  issue 
whether any damages award is actually enforceable in practice (firms may go bankrupt, bank 
accounts  are  in  another  country,  etc.).  In  cases  such  as  patent  enforcement  proceedings,  the 
goal  is  frequently  to  reach  licensing  agreements  and  thus  generate  future  revenue  for  the 
rightholder.  

Publication 

Almost  all  respondents  from  the  judiciary  and  legal  profession  in  the  public  consultation 
stated that judicial decisions related to the enforcement of IPRs are publicly accessible in their 
jurisdiction. However, only a few Member States have dedicated websites for such purposes. 
Furthermore,  very  often  only  final  judgments  from  the  appeal  courts  are  available,  not  first 
instance  or  interim  decisions.  These  are  available  only  on  commercial  databases.  In  other 
jurisdictions no central database exists and judgments can only be obtained directly from the 
court  in  question.  In  some  cases  publication  depends  on  the  approval  of  the  judge  or  the 
interest of the public in the decision in question. Personal data is removed before publication. 
For two Member States decisions do not seem to be publicly available. 

The interviews with experts indicate that many IPR enforcement actions are actually handled 
in a confidential manner and details of deals struck out-of-court are kept confidential.  

Digital environment 

The overall feedback received from rightholders in the public consultation is to be interpreted 
as considering the current provisions of the Directive related to evidence to be relevant also in 
the  digital  environment.  They  however  see  a  need  for  better  application  with  regard  to 
preserving evidence in the digital environment.  

There was a broad consensus among respondents that the interpretation of the Articles on the 
presentation and preservation of evidence (Articles 6 and 7) should be clarified for the digital 
environment. This included three main aspects: 

86 See "Support study…", p. 108 
87 See "Support study…", p. 108 

35 

 
 
                                                            
•  Clarifying  that  Articles  6  and  7  of  the  Directive  apply  equally  to  online  infringements. 
Specific  suggestions  include  clarifying  that  websites  and  their  servers  can  be  seized  as 
infringing goods, including at hosting providers; 

•  Ensuring  correct  and  harmonised  application  across  all  Member  States,  and  addressing 
suggested flaws in generating evidence in the digital infringement, such as the requirement in 
some Member States for notarised evidence; 

• Facilitating the production, preservation and cross-border acceptance of evidence, in light of 
specific challenges of digital environments such as i) the anonymity of the internet presenting 
difficulties in identifying and thus pursuing infringers, and ii) the ease with which infringing 
parties can delete evidence and online archives of date stamped data. 

Other approaches for enforcement of IPRs 

An  approach  currently  not  provided  for  by  the  Directive  and  which  was  discussed  with 
interview  partners  as  well  as  with  the  World  Intellectual  Property  Organisation  (WIPO) 
arbitration centre is the extent to which  alternative dispute resolution (ADR) – mediation 
and arbitration – provide alternative means for IPR enforcement. One of the advantages of 
ADR is that that cross-border issues can often be resolved more easily, as ADR is typically 
designed  in  such  a  way  that  the  whole  case  (which  could  span  several  Member  States)  is 
negotiated in one single procedure.  

ADR also tends to be faster and cheaper than litigation before courts. The big drawback is the 
observation that ADR works best (or may only work) if two parties who are in a contractual 
arrangement (e.g., have a licensing deal) already arrange for an ADR/mediation procedure in 
the contract, before there are any hostilities.  

However,  in  IPR  enforcement  it  is  often  that  applicants  and  defendants  have  not  had  an 
underlying prior contract regulating disputes on the IP via ADR, and once the argument starts, 
it is hard to still agree to use ADR. Therefore, there was some scepticism whether ADR could 
be  a  viable  alternative  for  IPR  enforcement  among  stakeholders.  While  it  has  been 
acknowledged that the significance of ADR has been increasing, ADR is still a rather nascent 
and small phenomenon in IPR enforcement.  

5.3.3. CONTRIBUTION OF OTHER DEVELOPMENTS 

Evaluation question 11 

Have there been developments since the entering into force of the Directive, in particular with 
regard to the development of the digital environment and technology in general that 
contributed to achieving the objectives? 

The main development since the entering into force of the Directive was an expansion of the 
digital market: 

36 

 
 
•  The  proliferation  of  new  business  models  for  distributing  digital  content  and  trading 
physical  goods  (both  legit  and  illegal  business  models,  with  the  latter  thriving  on  the 
occurrence of IP infringements) 

•  A stronger occurrence and relevance of cross-border / global trade and distribution 

The major issue with respect to new business models is the proliferation of internet platforms 
and  various  service  providers  that  could  be  considered  intermediaries  within  the  context  of 
Articles  9  and  11.  The  intermediary  issue  has  increased  in  significance,  also  –  because 
physical goods have been more and more traded via the internet. As such, illicit platforms of 
dubious  origin  have  been  a  topic  of  discussion,  as  have  large  platforms.  The  general 
indication from stakeholders is that there is an urge to have a wider and better definition of 
what  constitutes  an  intermediary  under  the  Directive,  particularly  by  rightholders,  while 
online  intermediaries  themselves  regard  the  current  legal  text  as  more  or  less  sufficient. 
A general conclusion that can be drawn is that, at the very least, the Directive as a tool for the 
enforcement  of  IPR  has  not  lost  significance,  but  continues  to  be  an  important  pillar  for 
safeguarding IPR enforcement. 

In recent times there have been, significant developments, in particular with the proliferation 
of legal alternatives to access IP protected digital content, such as streaming services or well 
developed games platforms88, which however still require effective enforcement tools.   

While this contributes indeed to reducing the space for business models based on infringing 
activities,  the  IP  enforcement  framework  remains  important  for  the  take-up  of  legal 
alternatives and the digital economy at large89. An efficient enforcement also through the civil 
redress  mechanisms  provided  by  IPRED  remains  relevant  as  part  of  the  conditions  which 

A 

of 

the 

the 

study 

recent 

Observatory 

commissioned 

88 
EUIPO 
by 
(https://euipo.europa.eu/ohimportal/en/web/observatory/observatory-publications) provides for an assessment of 
the availability, characteristics and quality of new business models for copyright-based creative industries in the 
EU. This study presents test cases carried out by a small panel of consumers with experience in accessing digital 
content via online sources in a selection of EU Member States to see whether and how digital content is available 
via  online  sources  in  the  different  Member  States  and  to  what  extent  there  is  access  to  this  content  across 
borders.  See  also  EUIPO/  EUROPOL,  2017  Situation  Report  on  Counterfeiting  and  Piracy  in  the  European 
Union  – 2017;  See WIPO paper  "Copyright  enforcement  in  the Digital  age:  empirical  economic  evidence  and 
conclusions", WIPO/ACE/10/20, August 25, 2015; 
89 Apart from the fact that for many users identifying whether a service provides legal access to content or not 
remains a challenge (for example the test case study quoted in fn 63 that a number of internet users in Europe 
take  mistakenly  the  fact  that  a  digital  content  is  freely  available  online  without  the  authorities  having  taken 
action  as  a  sign  that  the  service  provides  legal  access  to  content),,  piracy  remains  a  critical  challenge  due  not 
only to its negative impacts for right-holders (reduction in terms of revenues to authors, performers and all those 
involved  in  producing  creative  works),  but  also  because  it  inhibits  the  launch  of  new  services,  especially  in 
countries with low enforcement and high piracy. It additionally limits the potential of existing businesses, acting 
as unfair competition. Infringements of IP protected digital content remain also an area of criminal threat against 
IPR holders, consumers and general societal interests, requiring a special attention of enforcement authorities, as 
also  shown  by  the  EUIPO/Europol  joint  2017  situation  report  on  counterfeiting  and  piracy  in  the  European 
Union 
https://euipo.europa.eu/tunnel-
web/secure/webdav/guest/document_library/observatory/documents/reports/Executive%20Summary%20Situatio
n%20Report%20EUIPO-Europol_en.pdf).  

(see: 

37 

 
                                                            
 
secure that, investments in new creations and R&D are properly protected and can generate an 
appropriate return for investors and the creative industries90. 

In  conclusion,  the  Directive  remains  relevant  as  a  tool  facilitating  enforcement  of  the 
different IPRs. The overall relevance of the objectives of the Directive still corresponds to the 
needs of all stakeholders in the digital environment. 

5.2. 

COHERENCE 

The functioning of the Directive in terms of coherence has been assessed on the basis of the 
following evaluation questions: 

12) To what extent are the different measures, procedures and remedies provided for by the Directive 
coherent and complement each other or do they overlap or even contradict? 

13) To what extent have the different measures, procedures and remedies provided for by the Directive 
been complemented by non-legislative interventions at EU and national level, including voluntary 
stakeholder initiatives? 

14) To what extent is IPRED coherent with other instruments and policies at EU level having similar 
objectives, such as e.g. the E-commerce Directive? 

5.2.1.  COHERENCE OF THE DIFFERENT MEASURES 

Evaluation question 12 

To  what  extent  are  the  different  measures,  procedures  and  remedies  provided  for  by 
the Directive coherent and complement each other or do they overlap or even contradict? 

The  evaluation  did  not  identify  any  lack  of  coherence  between  the  different  measures, 
procedures and remedies themselves provided for by the Directive. 

Stakeholders  however  pointed  to  certain  problems  in  the  individual  application  of  these 
measures, procedures and remedies in relation to Article 3 of the Directive. 

According  to  Article  3,  the  measures,  procedures  and  remedies  necessary  to  ensure  the 
enforcement  of  the  intellectual  property  rights  covered  by  the  Directive  shall  be  fair  and 
equitable  and  shall  not  be  unnecessarily  complicated  or  costly,  or  entail  unreasonable  time-

90  Lenient  IPR  enforcement  in a  country, on  the  contrary,  is  likely  to  make  firms  in  IPR-sensitive  sectors  less 
eager to invest there. This is because of the vulnerability of proprietary processes to theft, and/ or that infringing 
products are more likely to displace sales of genuine products. By contrast, enforcing intellectual property rights 
can  stimulate  FDI,  and  through  that  channel  improve  welfare  in  the  host  country  ("The  economic  impacts  of 
counterfeiting and piracy", frontier economics, 2017). 

38 

 
 
 
                                                            
 
limits or unwarranted delays. They shall also be effective, proportionate and dissuasive and be 
applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide 
for safeguards against their abuse. 

Injunctions 

The  proportionality  of  injunctions  is  an  important  element  of  a  well-balanced  IPR 
enforcement  system.  Stakeholders  alleged  that  the  procedure  for  granting  injunctions  is  not 
always  well-balanced  in  the  light  of  Article  3,  as  injunctions  are  either  granted  too  easily 
without due regard to the proportionality of the measure vis-à-vis other fundamental rights, or 
on  the  contrary  they  are  not  granted  although  justified  to  protect  IP,  in  particular  in 
commercial-scale infringement cases.  

If  national  judicial  authorities  do  not  assess  the  proportionality  of  an  injunction,  i.e.  its 
adequacy  to  achieve  the  objective  of  the  law  taking  into  account  the  objective  to  strike  a 
balance  between  the  different  fundamental  rights  concerned,  on  a  case  by  case  basis,  the 
application of Article 11 of the Directive is, in the view of these stakeholders, not consistent 
with the general obligation of Article 3 the Directive, i.e. that the measures, procedures and 
remedies shall be fair and equitable and also proportionate. 

Stakeholders  also  complained  that  Member  States  do  not  give  due  consideration  to  the 
possibility  of  applying  alternative  measures,  as  established  in  Article  12  of  the  Directive. 
According  to  that  Article,  the  competent  judicial  authorities  may  order  pecuniary 
compensation to be paid to the injured party instead of applying the measures provided for in 
this section, inter alia injunctions, if that person acted unintentionally and without negligence, 
if  execution  of  the  measures  in  question  would  cause  him/her  disproportionate  harm  and  if 
pecuniary compensation to the injured party appears reasonably satisfactory.  

5.2.2.  COMPLEMENTARITY OF NON-LEGISLATIVE INTERVENTIONS 

Evaluation question 13 

 To  what  extent  have  the  different  measures,  procedures  and  remedies  provided  for  by  the 
Directive  been  complemented  by  non-legislative  interventions  at  EU  and  national  level, 
including voluntary stakeholder initiatives? 

From  the  different  feedback  from  stakeholders,  it  emerges  overall  that  non-legislative 
measures  such  as  voluntary  schemes  are  generally  perceived  beneficial  to  support  better 
enforcement  of  IPR.  Success  factors  for  these  voluntary  agreements  were  the  level  of 
commitment  of  the  signing  stakeholders  individually,  and  to  which  extent  they  were 
representative for their industries. 

During  discussions  on  existing  schemes  at  national  or  regional  level  with  the  Commission, 
stakeholders in the EU have been very positive on the general framework and the certification 
process  of  certain  existing  initiatives,  but  that  two  problems  have  been  brought  to  their 
attention:  the  lack  of  an  objective  compliance  programme  and  the  lack  of  reliability  and 
objectivity of a self-certification process. 

39 

 
A  study  by  the  EUIPO91  analyses  six  voluntary  collaboration  practices  addressing  online 
infringements of trade mark rights, design rights, copyright and rights related to copyright:   

  The  French  charter  for  the  fight  against  the  sale  of  counterfeit  goods  on  the  internet 

between intellectual property rightholders and e-commerce platforms.  

  The Dutch notice-and-take-down code of conduct directed to internet service providers that 

provide a public telecommunications service in the Netherlands.  

  The  Danish  code  of  conduct  for  internet  service  providers  regarding  the  management  of 

court DNS blocking orders relating to IP infringements. – 

  Article 1.7 of the ethics code of the Austrian advertising industry and related articles on the 

rules of procedure of the Werberat.  

  The  UK  good  practice  principles  for  the  trading  of  digital  display  advertising.  These 
voluntary  practices  are  intended  to  respect  both  the  law  and  the  fundamental  rights  of 
citizens,  while  combating  online  infringements  of  trade  mark  rights,  design  rights, 
copyright and rights related to copyright. They include codes of conduct and practices for 
taking down infringing sites, as well as for controlling advertising and the access to online 
payment systems. 

  The U.S. IACC payment processor initiative & portal program 

The EUIPO study casts light on the role of the parties involved, their coexistence with legal 
frameworks, the role of technology, the costs involved and the role of educational activities. It 
shows that the effectiveness of these schemes remains difficult to assess, and that the cost for 
monitoring activities may prove to be a burden.  

A  study  by  the  International  Chamber  of  Commerce  recommends  best  practices  for 
rightholders to engage with intermediaries to improve the effectiveness to fight counterfeits92.  

Other  initiatives  were  also  mentioned  during  the  Evaluation  Study  as  complementary 
measures.  Most  notably  trainings  and  exchanges  of  judges  (organised  by  the  EPO  or  the 
EUIPO) were perceived by stakeholders as very positive. The studies of the EU Observatory 
on Infringements of IP have also been quoted in the public stakeholder consultation, as well 
as anti-counterfeiting and piracy campaigns at national levels. 

In  2011  a  Memorandum  of  Understanding  (MoU)  on  the  sale  of  counterfeit  goods  via  the 
Internet  was  concluded,  under  the  auspices  of  the  Commission,  between  major  internet 
platforms and rightholders in order to reduce counterfeit products that are being sold online. 
The  impact  of  this  initiative  is  measured  with  key  performance  indicators  that  allow  for 
objective quantification. Results of the first monitoring cycle show positive tangible effects.  

Another similar on-going voluntary initiative is the MoU on online advertising and IPR which 
brings  together  different  stakeholders  from  the  advertising  industry,  such  as  rightholders, 

91 
https://euipo.europa.eu/tunnel-
web/secure/webdav/guest/document_library/observatory/documents/Research%20and%20sudies/study_voluntar
y_collaboration_practices_en.pdf  
92 Roles and responsibilities of intermediaries, ICC and BASCAP, March 2015 

40 

 
                                                            
advertisers,  advertising  intermediaries  and  technology  providers,  with  an  aim  to  reduce  the 
flow of ad revenue to IP infringing sites. In October 2016, an agreement was concluded under 
the  auspices  of  the  Commission  on  a  set  of  guiding  principles  between  industry 
representatives which was a key step towards concluding the Memoranda. 

In  order  to  tackle  due  diligence  in  other  stakeholder  circles,  potential  future  voluntary 
initiatives  of  this  kind  include  the  MoUs  concluded  by  payment  service  providers  and 
shipping companies.  

These initiatives can have a positive impact on the enforcement of IPR as they are industry-
led,  target  specific  issues  and  have  the  capability  of  responding  to  new  technological 
developments in a timely manner. 

5.2.3.  COHERENCE WITH OTHER EU INSTRUMENTS AND POLICIES 

Evaluation question 14 

To  what  extent  is  the  Directive  coherent  with  other  instruments  and  policies  at  EU  level 
having similar objectives, such as e.g. the E-commerce Directive? 

The Directive appears to be coherent with other EU instruments in the field of IPR and their 
enforcement, as well as with other relevant policies at EU level. 

First, the coherence of the Directive is assessed in the light of existing enforcement rules for 
specific IPRs.  

Trade marks 

The  Directive  is  in  line  with  the  trade  mark  acquis  and,  in  certain  cases  complements  it,  in 
particular  where it concerns the  Trade  Mark  Directive93  which  contains  no  express  rules  on 
enforcement.  The  EU  Trade  Mark  Regulation  (EUTMR)94  provides  for  measures  on 
injunctive  relief  in  cases  of  infringement  of  EU  trade  marks.  Furthermore,  its  Article  131 
refers to the possibility of requesting provisional measures “as may be available under the law 
of that State in respect of a national trade mark”.  

Designs 

In  relation  to  national  design  rights,  the  Design  Directive95  does  not  contain  any  express 
enforcement-related rules either. The EU Design Regulation96 contains specific provisions in 
respect  to  the  requirements  for  provisional  and  precautionary  measures  such  as  ex  parte 
injunctions.  Article  90  of  the  Design  Regulation  refers  to  the  possibility  of  requesting 
provisional measures “as may be available under the law of that State in respect of national 

93 Directive (EU) 2015/2436 of 16.12.2015. 
94 Regulation (EU) 2017/1001 of 14.6.2017. 
95 Directive 98/71/EC of 13.10.1998. 
96 Council Regulation (EC) No 6/2002 of 12.12.2001. 

41 

 
 
                                                            
design  rights”.  This  is  a  matter  of  national  law,  as  harmonised  by  the  IPR  Enforcement 
Directive, with particular reference to Article 9 (in relation to provisional and precautionary 
measures) of that Directive. 

Geographical indications 

With regards to the protection of Geographical Indications (GIs) as IPR, the IPR Enforcement 
Directive  complements  the  various  Regulations  at  Union97  level  which  provide  for  the 
protection of GIs in different sectors (agricultural products and foodstuffs, wine, spirit drinks 
and  aromatised  wines).  As  the  GIs  concern  agricultural  product  and  foodstuffs  (and 
beverages)  controls  on  production  and  market  surveillance  is  provided  by  Member  States 
pursuant to the Official Food and Feed Control Regulation98. The respective GI Regulations 
provide for general enforcement obligations on Member States including by cross reference to 
the Official Feed and food Control Regulation, and include administrative checks  Therefore, 
the Directive and respective GI Regulations are complementary in their nature.  

Copyright 

As stipulated in Article 2(2) the IPR  Enforcement Directive "this Directive shall be without 
prejudice to the specific provisions on the enforcement of rights and on exceptions contained 
in Community legislation concerning copyright and rights related to copyright, notably those 
found in Council Directive 91/250/EEC [on the legal protection of computer programs (now 
Directive  2009/24/EC  on  the  legal  protection  of  computer  programs)]  and,  in  particular, 
Article  7  thereof  or  in  Directive  2001/29/EC  [on  the  harmonisation  of  certain  aspects  of 
copyright and related rights in the information society] and, in particular, Articles 2 to 6 and 
Article  8  thereof.".  In  addition,  Articles  9  of  the  IPR  Enforcement  Directive  provides  that 
injunctions  against  intermediaries  whose  services  are  used  by  a  third  party  to  infringe  a 
copyright or a related right are covered by Directive 2001/29/EC, whereas its Article 11 states 
in this connection that it is without prejudice to Article 8(3) of that latter Directive.  

The evaluation did not identify any incoherence in general between these two Directives, nor 
between  the  Articles  9  and  11  the  IPR  Enforcement  Directive  and  Article  8(3)  Information 
Society Directive in particular.  

E-Commerce Directive 

According to Article 2(3)(a) of the IPR Enforcement Directive, the "Directive shall not affect 
[…]  Directive  2000/31/EC  in  general,  and  Articles  12  to  15  of  Directive  2000/31/EC  in 
particular."  At  the  same  time  Articles  12(3),  13(2)  and  14(3)  of  the  e-Commerce  Directive 
state  that those  articles shall  not  affect the  possibility,  for  a  national court  or  administrative 
authority, of requiring a service provider to terminate or prevent an infringement.  

97See  e.g.  Regulation  (EU)  No  1151/2012  of  21.11.2012.  and  Council  Regulation  (EC)  No.  510/2006  of 
20.3.2006. 
98 Regulation (EU) 2017/625 of 15.3.2017. 

42 

 
                                                            
The CJEU has provided further guidance on the interplay between the e-Commerce Directive 
and the IPR Enforcement Directive99. 

Taking account of these provisions and the relevant case law, it appears from the evaluation 
that the IPR Enforcement Directive is coherent with the e-Commerce Directive. 

Civil justice  

Judicial  cooperation  in  civil  matters  aims  to  establish  close  cooperation  between  the 
authorities  of  the  Member  States  in  order  to  eliminate  any  obstacles  deriving  from 
incompatibilities between the various legal and administrative systems. The EU’s action in the 
area  of  judicial  cooperation  in  civil  matters  seeks  primarily  to  achieve  the  following 
objectives: 

 

 

 
 

to  ensure a high  degree  of  legal  certainty  for  citizens  and  businesses  in  cross-border 
relations governed by civil law; 
to guarantee citizens and businesses easy and effective access to civil justice in order 
to settle cross-border disputes; 
to simplify cross-border cooperation instruments between national civil courts; 
to support the training of the judiciary and judicial staff. 

The improvement of the quality, independence and efficiency of judicial systems is  another 
priority of the EU's civil justice policy.  

The  Directive  provides  measures,  procedures  and  remedies  necessary  to  ensure  the  civil 
enforcement of IPR in the Member States. While the Directive approximates the legislation of 
the Member States in the field of civil enforcement of the substantive law on IPR it does not 
aim,  as  stated  in  Recital  11,  to  establish  harmonised  rules  for  judicial  cooperation, 
jurisdiction, the recognition and enforcement of decisions in civil and commercial matters, or 
deal with applicable law. As noted in that recital, there are Union instruments which govern 
such matters in general terms and are, in principle, equally applicable to intellectual property. 

Protection of fundamental rights 

As laid down in Recital 32 of the Directive, the Directive respects the fundamental rights and 
observes the principles recognised in particular by the Charter of Fundamental Rights of the 
European Union. The CJEU has provided further guidance on the protection of fundamental 
rights in the enforcement of IPR.100  

International obligations 

As stated in the recitals, at international level, all Member States, as well as the Union itself as 
regards matters within its competence, are bound by the Agreement on trade-related aspects 
of  intellectual  property  (the  TRIPS  Agreement).  The  TRIPS  Agreement  contains,  in 

99 E.g. Case C‑484/14, Mc Fadden; Case C-324/09, L’Oréal v. eBay. 
100  E.g.  Judgment  of  the  CJEU  (Grand  Chamber)  of  29  January  2008,  C-275/06,  Productores  de  Música  de 
España (Promusicae) v Telefónica de España SAU, EU:C:2008:54, para. 68. 

43 

 
                                                            
particular,  provisions  on  the  means  of  enforcing  intellectual  property  rights,  which  are 
common standards applicable at international level and implemented in all Member States.  

There  are  also  international  conventions  to  which  all  Member  States  are  parties  and  which 
also contain provisions on the means of enforcing intellectual property rights. These include, 
in  particular,  the  Paris  Convention  for  the  Protection  of  Industrial  Property,  the  Berne 
Convention for the Protection of Literary and Artistic Works, and the Rome Convention for 
the Protection of Performers, Producers of Phonograms and Broadcasting Organisations.  

The  Directive  states  clearly  that  this  Directive  shall  not  affect  Member  States'  international 
obligations,  including  those  under  the  TRIPS  Agreement  (Art.  2(3)(b)).  The  evaluation  has 
not revealed any incoherence of the Directive with international obligations.  

In  conclusion,  the  Directive  appears  coherent  with  other  EU  instruments  on  IPRs  and  their 
enforcement.  It  also  appears  that  voluntary  stakeholders'  initiatives  can  be  a  powerful 
complementary tool to judicial enforcement measures, depending on the level of engagement 
of stakeholders.  

5.3. 

EU ADDED VALUE 

The EU added value has been assessed on the basis of the following evaluation questions: 

15) What has been the EU added value of the Directive, compared to what could have been achieved 
by Member States at national level in ensuring the enforcement of IPRs? 

16) Do the objectives addressed by the Directive continue to require action at EU level? 

5.3.1.  EU ADDED VALUE OF THE DIRECTIVE 

Evaluation question 15 

What  has  been  the  EU  added  value  of  the  Directive,  compared  to  what  could  have  been 
achieved by Member States at national level in ensuring the enforcement of IPRs? 

According to the feedback from experts and stakeholders101, the EU added value must be seen 
primarily  in  the  context  of  establishing  a  common  set  of  tools  for  IPR  enforcement  across 
Europe which would basically:  

  Allow  for  the  creation of  a  truly  pan-European  strategy  for  firms  to  enforce  their  IP 
rights  due  to  the  common  concepts  and  procedures  (even  if  application  in  the  MS 
differs).  

  Lead to efficiency and effectiveness gains; in the sense that in many cases or Member 

States IP enforcement becomes an option at all. 

  The benefit for judges to be able to read and be inspired by rulings in other Member 
States  applying  the  same  legal  basis  results  in  higher  predictability  of  rulings  in  an 
international context and also contributes to higher efficiency and effectiveness. 

101 See "Support study…", p. 130 

44 

 
                                                            
  The  persisting  difficulties  of  cross-border  protection  of  IP,  often  linked  to  the 
borderless  nature  of  the  internet  and  knowledge  based  business  activities,  require  a 
common EU approach. 

According to the experts consulted during the evaluation, it is hardly conceivable, that these 
values would have been achievable without the Directive, even if the Member States would 
have  themselves  invested  heavily  and  more  in  civil  IPR  enforcement.102  The  feedback 
therefore  indicate  that  purely  nationally-driven  approaches  would  have  led  to  less  efficient 
and  effective  country-specific  enforcement  practices,  in  some  cases  even  becoming  a 
deterrent to enforcing IP rights at all.  

5.3.2.  NEED FOR CONTINUOUS EU ACTION 

Evaluation question 16 

Do the objectives addressed by the Directive continue to require action at EU level? 

There was a large consensus among experts consulted that continued action is required at EU 
level to tackle the objectives addressed. This, not the least, because IPR infringements remain 
a significant phenomenon and new challenges appear such as new strategies of counterfeiters 
and pirates that work increasingly in an internationally connected way. 

The recent EUIPO study on IPR infringements in the clothing sector states  for example that 
counterfeit clothes or shoes destined for the EU market are manufactured outside or inside the 
EU, imported into the EU and/or distributed across internal EU borders, promoted on global 
social  networks  and  offered  on  internet  sales  platforms.  The  cross-border  nature  of 
commercial scale IP infringing activities has been highlighted in the 2015 and 2017 Situation 
Report of Europol and the EUIPO.103 

Rightholders report difficulties to enforce their rights at EU level. They claim that they have 
to apply  for injunctions separately in each jurisdiction they would like to  cover because the 
current complexity of rules. In particular the different applications of the national IP rules and 
national  procedural  rules  for  granting  interlocutory  or  permanent  injunctions  -  for  the  same 
infringement against several infringers or intermediaries from several jurisdictions in the EU- 
is seen as cumbersome. 

Procedural  requirements  such  as  translation  and  more  importantly  the  divergence  in 
applicable  rules  result  in  the  difficulty  to  join  case  as  well  as  significant  costs  and  lengthy 
procedures. 

102 Idem. 
103  See  EUIPO/Europol  joint  2017  situation  report  on  counterfeiting  and  piracy  in  the  European  Union 
(https://euipo.europa.eu/tunnel-
web/secure/webdav/guest/document_library/observatory/documents/reports/Executive%20Summary%20Situatio
n%20Report%20EUIPO-Europol_en.pdf) 

45 

 
                                                            
In conclusion, the evaluation of the EU added value indicates the continuous need for action 
at EU level, and moreover calls for improved enforcement at EU level. 

6.  CONCLUSIONS  

The  fact  that  the  evaluation  can  only  rely  on  very  limited  empirical  evidence  impedes 
reaching  definitive  conclusions  on  the  detailed  performance  criteria  of  this  Directive. 
However,  a  solid  expert  analysis,  including  the  public  consultation,  and  several  additional 
stakeholder consultation, and studies led by the EUIPO have provided significant input to the 
evaluation.  

The main conclusions of the evaluation are the following: 

  All  Member  States  have  rules  of  national  law  in  place  that  transpose  the  Directive.  The 
Directive can be considered to have contributed to fostering a common framework for the 
enforcement of IPR. 

  As  regards  effectiveness,  the  main  conclusion  drawn  from  the  evaluation  of  the 
functioning  of  the  Directive  is  that  it  has  achieved  its  main  objective  by  providing  a 
minimum but solid standard toolbox of measures, procedures and remedies, contributing 
to  a  level  playing  field  for  the enforcement  of  IPR  in  the  internal  market.  While  the 
Directive's  objectives  include  homogeneity,  there  still  exist  differences  on  how  these 
means are applied by the competent judicial authorities at national level which affect the 
effectiveness of the Directive. This is mainly due to uncertainties and diverging views as 
to the way the provisions of the Directive should be understood (in particular provisions 
relating  to  presenting  and  preserving  evidence,    right  of  information,  provisional  and 
permanent injunctions, damages, reimbursement of  legal costs) especially taking account 
of new challenges, including the digital revolution and cross-border context, as well as to 
differences  in  national  civil  law  procedural  frameworks,  into  which  the  measures, 
procedures  and  remedies  of  the  Directive  are  embedded,  as  well  as  dissimilar  legal  and 
judicial traditions. 

 

In addition, limited public access to judgments on IPR enforcement rendered at national 
level allows for little transparency on how the Directive is applied in practice and does not 
therefore facilitate predictability, knowledge exchange and the definition of best practices. 

  The  Directive  can  be  considered  to  have  been  a  cost-efficient  and  overall  a  beneficial 
intervention.  It  has  not  created  administrative  burden  or  significant  compliance  or 
implementation costs for either stakeholders or Member States. Affordability of the costs 
represents however an issue particularly for the SMEs and in that context allowing for an 
easier  enforcement  may  help  SMEs  when  acting  as  applicants,  but  have  negative 
consequences when acting as defendants. 

  The  existence  of  national  judicial  authorities  specialised  in  matters  related  to  IPR 
enforcement  constitutes  a  decisive  factor  for  the  effective  and  efficient  use  of  the 
measures, procedures and remedies under the Directive.  

46 

 
  The Directive remains relevant as an instrument facilitating enforcement of the different 

IPRs in the digital environment and in the cross-border trade. 

  The Directive is coherent both internally and with other EU interventions pursuing similar 
objectives.  Voluntary  stakeholders'  initiatives  can  be  a  powerful  complementary  tool  to 
judicial enforcement measures, depending on the level of engagement of stakeholders.  

  Finally,  the  Directive's  objectives  remain  valid  in  view  of  the  Commission  priorities  to 
complete  the  creation  of  the  digital  single  market  and  to  deliver  the  Single  Market 
Strategy. 

  As regards EU added value, the Directive has provided value by establishing harmonised 

rules across the internal market.  

 

In terms of REFIT, since the Directive has not created administrative burden or significant 
compliance  and  implementation  costs  for  stakeholders  or  Member  States  and  since  its 
provisions  generally  leave  the  Member  States  a  margin  of  discretion,  the  available 
simplification potential is estimated to be limited. The costs of bringing legal action and 
the preparation of legal action derive primarily from the general rules and procedures for 
the use of civil justice system in a Member State, not from the Directive. 

On the basis of the above, it can be concluded that the application of the Directive by national 
authorities  would  benefit  from  the  appropriate  guidance  on  how  to  interpret  key  provisions 
and  from  the  additional  gathering  of  best  practices  for  public  exchange,  complemented  by 
efforts to foster transparency on IPR enforcement-related case law and strengthen the capacity 
of national judges to adequately deal with IPR infringement claims. 

47 

 
 
 
 
ANNEX I: PROCEDURAL INFORMATION 

1. 

IDENTIFICATION 

Lead DG: DG Internal Market, Industry, Entrepreneurship and SMEs (DG GROW) 

Agenda  planning/Work  programme  references:  The  Agenda  Planning  Reference 
is 
2016/GROW/002. This evaluation forms part of the Commission's initiative to modernise the 
enforcement  of  IPR,  as  announced  in  the  Digital  Single  Market  Strategy104  and  the  Single 
Market  Strategy105.  The  evaluation  is  also  part  of  the  Commission's  Regulatory  Fitness  and 
Performance Programme (REFIT). 

2. 

ORGANISATION AND TIMING 

An Inter-Service Steering Group was set up in 2015. In total, five meetings were organised: 
on  24  September  2015,  on  28  July  2016,  on  5  October  2016,  on  9  June  2017  and  on  19 
September  2017.  The  following  Directorate-Generals  and  services  were  consulted:  SG,  SJ, 
AGRI,  BUDG,  CNCT,  COMP,  EAC,  ECFIN,  EMPL,  GROW,  JRC,  JUST,  OLAF,  RTD, 
SANTE,  TRADE,  TAXUD  and  the  EPSC.  The  feedback  received  from  these  Directorate-
Generals and services has been taken into account. 

The  ISSG  approved  the  Evaluation  Roadmap  and  the  public  consultation  following  its 
meeting of 24 September 2015. 

3. 

EVIDENCE USED IN THE EVALUATION 

A  first  evaluation  of  IPRED  took  place  in  2010.  The  publication  of  the  evaluation  report106 
and its accompanying staff working document107 in December 2010 started a comprehensive 
consultation  process  on  the  functioning  of  IPRED,  laying  the  foundation  for  the  current 
evaluation. The report provided the basis for an extensive public consultation which closed in 
late  March  2011108.  A  public  hearing  on  the  application  of  IPRED  in  a  digital  environment 
was  held  on  7  June  2011109.  Furthermore,  a  conference  on  the  enforcement  of  intellectual 
property rights was held on 26 April 2012. A broad public consultation on the efficiency of 
proceedings  and  accessibility  of  measures  in  the  civil  enforcement  of  intellectual  property 
rights  was launched in  November 2012110.  Finally, in  December 2013, a  public consultation 

Communication  from  the  Commission  "Upgrading  the  Single  Market:  more  opportunities  for  people 

Communication from the Commission "A Digital Single Market Strategy for Europe" (COM(2015) 192 

Report from the Commission "Application of Directive 2004/48/EC of the European Parliament and the 

104  
final) 
105  
and business" (COM(2015) 550 final) 
106  
Council of 29 April 2004 on the enforcement of intellectual property rights" (COM(2010)0779 final) 
107  
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" (SEC(2010)1589 final) 
108  
109  
110  

http://ec.europa.eu/internal_market/consultations/2011/intellectual_property_rights_en.htm  
http://ec.europa.eu/internal_market/iprenforcement/docs/conference20110607/hearing-report_en.pdf  
http://ec.europa.eu/internal_market/consultations/2012/intellectual-property-rights_en.htm  

48 

 
 
                                                            
on the review of the EU copyright rules gathered stakeholders' views on IPR enforcement in 
the digital age111.  

The  European  Observatory  on  Infringements  of  Intellectual  Property  Rights  prepared  a 
number of studies which supported the evaluation of the functioning of IPRED112.  

Finally, an open internet-based consultation of 12 weeks on the evaluation of the Directive on 
the  enforcement  of  intellectual  property  rights  and  the  possible  modernisation  of  the  legal 
framework  was  launched  in  December  2015  and  was  running  until  April  2016,  targeting 
public authorities and Member State authorities, rightholders, intermediary service providers, 
the judiciary and consumers and civil society113.  

Member States' authorities responsible for intellectual property policy and, in particular, the 
enforcement  of  intellectual  property  rights,  were  involved  in  the  process  through  the 
Commission's Group of experts on the enforcement of intellectual property rights114. 

4. 

STUDIES TO SUPPORT THE EVALUATION REPORT  

A study providing support for an ex-post evaluation of Directive 2004/48/EC of the European 
Parliament  and  of  the  Council  of  29  April  2004  on  the  enforcement  of  intellectual  property 
rights has been prepared by an external contractor115. The overarching objective of the study 
was  to  evaluate  the  relevance  and  effectiveness,  the  coherence,  efficiency  and  EU  added-
value of IPRED. In that respect the study provided  

• 

• 

• 

• 

a legal analysis of the application of the provisions of the Directive, as well as of the 
provisions  of  national  law  which  are  relevant  in  the  context  of  the  Directive  and  its 
possible revision,  

an  empirical  analysis  of  the  application  and  effect  of  the  Directive  in  each  Member 
State,  and  on  the  Single  Market  as  a  whole,  with  a  special  focus  on  cross-border 
aspects.  It  should  also 
the  quantification  of  regulatory  (including 
administrative) costs and benefits triggered by the directive. 

include 

a synthesis of the empirical and legal analysis, and 

on the basis of the findings, support for an evaluation of the Directive. 

111  
112  
113  
114  
115  

http://ec.europa.eu/internal_market/consultations/2013/copyright-rules/index_en.htm  
https://euipo.europa.eu/ohimportal/en/web/observatory/observatory-publications  
http://ec.europa.eu/growth/tools-databases/newsroom/cf/itemdetail.cfm?item_id=8580 
http://ec.europa.eu/transparency/regexpert/index.cfm?do=groupDetail.groupDetail&groupID=3216  
[Reference and link to be added once the study is published] 

49 

 
 
 
                                                            
ANNEX II: SYNOPSIS REPORT 

1)  STAKEHOLDER CONSULTATION 

In order to support an evaluation of the Directive the Commission launched on 9 December 
2015 a public consultation on the evaluation and modernisation of the legal framework for the 
enforcement  of  intellectual  property  rights.  The  consultation  aimed  to  help  assess  the 
functioning of the Directive in the online environment, with a view to identifying the possible 
need  for  adapting  its  provisions  and,  where  appropriate,  to  propose  corrective  measures, 
focusing on commercial-scale infringements and cross-border applicability and in full respect 
of fundamental rights. Previous consultations had led to the conclusion that a number of key 
provisions of the Directive, such as the right of information, the application of injunctions or 
the  calculation  of  damages,  might  not  function  properly  or  deliver  the  expected  results,  in 
particular in the online environment and in a cross-border context. Beyond the evaluation of 
the current Directive the consultation addressed a number of new issues, such as the role of 
intermediaries  in  IPR  enforcement  or  the  specialisation  of  courts,  which  are  currently  not 
dealt with by the Directive but might be taken up in any future initiative in order to modernise 
the  enforcement  of  IPR.  Finally,  the  public  consultation  sought  opinions  about  the  use  and 
impact of 'follow the money' initiatives in the area of IPR enforcement. 

The Commission published a comprehensive summary of responses to the public consultation 
on  the  evaluation  and  modernisation  of  the  legal  framework  for  the  enforcement  of 
intellectual property rights on 14 September 2016116. 

Responses to the consultation 

the 

judiciary  and 

The Commission received 492 responses to 
the  public  consultation,  454  responses 
through  the  dedicated  online  tool  and  41 
responses  by  email.  Most  responses  came 
from  rightholders,  followed  by  citizens, 
intermediaries, 
legal 
profession  and  Member  States  and  public 
authorities.  The  geographical  provenance 
of  the  responses  is  quite  balanced  for  all 
but  one  targeted  stakeholder  group,  which 
should  allow  for  a  comprehensive  analysis  of  the  functioning  of  the  Directive  in  the  EU28. 
The  situation  is  quite  different  for  the  citizens'  responses  where  more  than  50%  of  the 
contributions  originate  from  Germany.  Almost  half  of  the  individuals  who  replied  to  the 
consultation were aged under 34 years. 

116  

Available at http://ec.europa.eu/DocsRoom/documents/18661 

50 

 
                                                            
Looking at the rightholders that responded to the consultation and the type of IPR they hold 
or represent 2/3 of these rights are industrial property rights and 1/3 copyright or rights related 
to copyright. 

Of  the  respondents  under  the  category  of  judiciary  and  legal  professions,  most  responses 
came from the legal profession (counsellors or associations), with only a few responses from 
judges and academia. 

The intermediaries that responded to the consultation are mainly internet service providers, 
such as internet access providers, online marketplaces, content hosting platforms or their trade 
associations.  A  number  of  payment  service  providers,  transport  and  logistic  companies  and 
advertising service providers also responded to the consultation.  

Finally, public authorities responsible for intellectual property policy, in particular for IPR 
enforcement,  and  other  enforcement  authorities  from  17  Member  States  contributed  to  the 
public consultation.  

Main findings 

The contributions to the public consultation confirmed that the infringement of IPR is a major 
problem.  More  than  three  quarters  of  the  responding  rightholders  and  public  authorities 
reported that IPR infringements have increased over the last 10 years. Rightholders submitted 
that IPR infringements not only have a negative overall financial impact on their turnover but 
also cause reputational damage and generate high monitoring and enforcement costs. Public 
authorities  consider  the  negative  impact  on  tax  revenues,  health,  safety,  SMEs  and 
competitiveness to be very significant. 

While  the  majority  of  respondents  felt  that  the  existing  rules  have  helped  effectively  in 
protecting  IP  and  preventing  IP  infringements,  many  rightholders  and  intermediaries  in 
particular  consider  that  the  measures  and  remedies  provided  for  by  the  Directive  are  not 
applied  in  a  homogeneous  manner  across  the  Member  States.  This  could  result  in  different 
levels  of  protection  in  the  Member  States  and  suggests  that  the  Directive  did  not  fully 
eliminate disparities at national level as regards the means of enforcing IPR.  

51 

 
 
More than three quarters of citizens felt that procedural and fundamental rights are not well 
respected in the application of the Directive.  

The main reasons for rightholders not to seek civil redress in cases of IPR infringement are 
lawyers’  fees  and  other  costs  related  to  litigation,  length  of  procedure,  low  probability  of 
obtaining appropriate compensation for the damages suffered and low probability of obtaining 
appropriate compensation of legal costs and other expenses. This seems to indicate not only 
that  the  measures  provided  for  by  the  Directive  do  not  deliver  the  expected  results  but  also 
that national civil enforcement systems in general do not ensure sufficient access to justice.  

A significant number of respondents identified a need to adjust the measures, procedures and 
remedies  provided  for  by  the  Directive,  in  order  to  ensure  legal  certainty  and  enhance  their 
effectiveness:  

  All stakeholder groups identified a need to adjust the rules on evidence. Many respondents 
felt that the rules were not effective enough, in particular with regard to the preservation 
of  evidence  in  the  digital  environment  and  the  presentation  of  evidence  obtained  in 
another jurisdiction.  

  All  stakeholder  groups  apart  from  intermediaries  saw  a  need  to  adjust  the  right  of 
information.  Many  are  concerned  that  the  right  balance  is  not  being  struck  between  the 
right to property and the right to judicial review on the one hand and the right to respect 
for private life and/or the right to protection of personal data on the other.  

  Rightholders,  the  judiciary  and  legal  profession  and  citizens  called  for  an  adjustment  of 
the  rules  for  setting  damages.  Respondents  do  not  only  seek  more  legal  clarity  on  the 
calculation of damages but also a fairer allocation.  

  All  respondents  except  the  Member  States  identified  a  need  to  adjust  the  rules  on  the 
reimbursement of costs. Respondents called for adjustments in order to enhance the level 
of reimbursement and to provide for a uniform interpretation and application of the rules. 

  Rightholders  and  the  judiciary  and  legal  profession  see  a  need  to  adjust  the  rules  for 
provisional and precautionary measures and for injunctions, calling for a clarification of 
the scope of injunctions, in particular with regard to intermediaries. 

The consultation also addressed a number of issues which are currently not dealt with by the 
Directive but might be taken up in any future initiative in order to modernise the enforcement 
of  IPR.  Looking  at  the role,  responsibility and  scope  of  engagement  of  intermediaries  in  IP 
enforcement,  Member  States  and  rightholders  believed  that  intermediaries  should  play  an 
important  role  in  enforcing  IPR,  whereas  intermediaries  and  citizens  did  not  believe  so. 
Statutory  cooperation  or  co-regulation  is  considered  to  be  more  efficient  than  voluntary 
cooperation. All stakeholder groups were of the opinion that legal action in a court specialised 
in  IPR  matters  provides  an  added  value  compared  to  legal  action  in  non-specialised  courts. 
The  key  advantages  are  perceived  to  be  the  shorter  length  of  proceedings,  more  fit-for-
purpose proceedings and better quality judgments. 

52 

 
Finally, the consultation encouraged participants to raise any other issue outside the scope of 
the current legal framework that could be considered in view of the intention to modernise the 
enforcement of IPR. The responses suggest that there are a number of issues outside the scope 
of the Directive and its current revision that are very relevant for the efficient enforcement of 
IPR: 

  The  cumbersome  procedure  for  obtaining  provisional  and  precautionary  measures  or 
injunctions  for  the  same  infringements  against  similar  addressees  in  more  than  one 
jurisdiction in the EU was an issue particularly raised by copyright holders. 

  The lack of harmonisation of substantive IP rules is an issue adding to the challenges of 
cross-border  enforcement.  The  application  of  the  relevant  rules  on  jurisdiction  and  the 
recognition and enforcement of judgments in civil and commercial matters and on the law 
to  result 
applicable 
unavoidably in the competence of different national courts and the application of different 
national laws. 

to  non-contractual  obligations 

in  cross-border  cases  seems 

  Many  rightholders  also  highlighted  the  application  of  the  e-commerce  framework  as  an 
issue, on the one hand with regard to the provisions on the liability of intermediary service 
providers,  on  the  other  hand  stressing  the  need  for  a  proper  enforcement  of  the 
transparency requirements foreseen in that framework. 

  Technological developments were seen to create major challenges for the enforcement of 
IPR, for example the use of anonymisation services on the internet or the covering-up of 
illegal activities behind legitimate e-commerce businesses. The enforcement of IPR in the 
digital  environment  also  poses  particular  questions  for  internet  governance  and  the 
allocation and use of domain names.  

  The development of an attractive legal offer is another issue. Users seek attractive offers 
and  will  not  always,  or  are  not  able  to,  distinguish  between  legal  and  illegal  offers,  in 
particular if the legal offer is not available or unattractive from a consumer perspective.  

  Many  respondents  also  characterised  commercial-scale  IPR  infringement  as  a  global 
business  and  consider  that  efficient  enforcement  will  only  be  possible  if  all  relevant 
stakeholders across the global supply web are involved.  

  Finally  many  respondents  claimed  that  the  disparities  between  the  national  systems  of 

criminal sanctions make it difficult to combat counterfeiting and piracy effectively. 

53 

 
 
 
 
 
 
2) STAKEHOLDER CONSULTATION 

An online public consultation on the efficiency of proceedings and accessibility of measures 
for the civil enforcement of intellectual property rights was launched on 30 November 2012 
and  closed  on  30  March  2013.  The  survey  aimed  at  gathering  specific  information  on  the 
efficiency  of  proceedings  and  accessibility  of  measures  used  in  the  context  of  civil 
enforcement  of  intellectual  property  rights.  The  data  gathered  was  meant  to  enable  the 
Commission to conduct a comprehensive assessment of the functionality of civil enforcement 
systems put in place in the Member States in order to improve the situation of all the actors 
active in the innovative sectors of European economy. 

Responses to the consultation 

The  Commission  received  282  responses  to  the  public  consultation.  The  largest  share  of 
replies (57%) was submitted by individual citizens (two thirds of who declared themselves as 
being  rightholders).  Responses  were  furthermore  received  from  undertakings  holding 
intellectual  property 
trade  and  business  associations  and  anti-
counterfeiting/piracy organisations), internet service providers, telecommunications operators, 
collecting  societies  and  public  authorities.  Among  undertakings  or  associations,  around  8% 
declared being classified as a SME.  

(including 

rights 

There  was  a  wide  geographical  coverage  in  terms  of  responses  received,  with  respondents 
from 24 EU Member States. No response originating from Cyprus, Slovakia and Malta was 
received.  A  significant  number  of  responses  were  also  submitted  by  European  and 
international bodies and associations.                  

Main findings                        

More  than  two  thirds  of  the  respondents  (70  %)  have  answered  the  question  about  the 
significance  of  their  IPR  on  their  performance  and  growth.  It  seems  however  difficult  to 
present the responses about the importance for each IP right since they do not correspond to 
the  figures  provided  in  the  initial  question  (for  example,  one  contributor  declared  holding 
geographical  indications  rights  but  37  contributors  declared  their  geographical  indication 

54 

 
 
                                  
                                              
rights  had  no  significance  for  their performance  and  growth).  It  seems  however  that  among 
the various intellectual property rights, more respondents holding copyrights or rights related 
to copyright (50%) consider as crucial the significance of their right for their businesses. 

Less  than  15%  percent  of  the  respondents  have  answered  the  questions  regarding  the 
importance  of  licensing  intellectual  property  rights  from  other  entities  or  to  other  entities. 
Among those, 69% found that licensing is either crucial or of high economic importance for 
their businesses. Respondents from the pharmaceutical sector emphasized that the majority of 
their cooperation with  research firms or  universities is  done via various license agreements, 
therefore  enforceability  of  those  agreements  is  crucial.  Respondents  from  the  audio  visual 
industry  also  pointed  out  the  high  importance  of  licensing  in  their  industry  as  well  as  the 
significant economic damage caused by infringements.  

If  around  100  contributors  responded  to  the  question  concerning  the  value  of  their  IPR 
portfolio, few indications were given as to its exact value and the way it is calculated. Some 
respondents referred to their annual turnover or explained that there is no reasonable method 
to properly determine the value of their portfolio.  

The vast majority of respondents indicated that infringements have a negative impact on their 
IPR portfolio. For the audio visual industry, it is considered that unpaid license fees are the 
greatest part of their loss (between 20 and 70 % of the annual income) costing ca 500 million 
euros  per  year.  Other  than  the  representatives  of  the  music  and  film  industries,  the 
representatives of the plant breeding and seed trading industry suggested the highest damage 
from infringing activities (claiming that around 50% of farmers use counterfeit products).  
Nevertheless,  some  respondents,  especially  from  the  audio  visual  industry  claim  that 
infringements have a positive effect on their IPR portfolio, increasing the awareness of their 
works. 

3) STAKEHOLDER CONSULTATION  

On 22 December 2010, the Commission adopted its "Report on the application of Directive 
2004/48/EC  on  the  enforcement  of  intellectual  property  rights"117.  The  Report  was 
accompanied by a Commission Staff Working Paper containing an article-by-article analysis 
of the application of the Directive in the Member States118.  

With  the  adoption,  the  Commission  launched  a  public  consultation  on  the  Report,  from  11 
January 2011 to 31 March 2011, with the aim to verify the information provided in the report 
and to identify additional issues that should be addressed in the context of a possible review 
of the Directive. 

117 (COM(2010)779 final) 
118 (SEC(2010)1589) 

55 

 
 
 
 
 
 
 
                                                            
Responses to the consultation 

A total of 380 contributions were received by the services of DG Internal Market and Services 
(hereunder  DG  MARKT)  from  a  broad  range  of  relevant  associations  and  organisations, 
parties  and  professions.  The  largest  share  of  replies  was  submitted  by  individual  citizens 
(most  of  them  internet  users  resident  in  France)  who  focused  their  comments  on  the  issues 
related  to  the  digital  environment.  Responses  were  furthermore  received  from  rightholders 
(including  trade  and  business  associations  and  anti-counterfeiting/piracy  organisations), 
consumer organisations (in particular internet user organisations), internet service providers, 
telecommunication operators, academics, carriers, collecting societies and public authorities. 
Among  these  public  authorities,  there  were  20  Member  States'  governments  that  provided 
replies.  

There  was  a  wide  geographical  coverage  in  terms  of  responses  received,  with  respondents 
originating  from  25  EU  Member  States,  and  only  Cyprus  and  Luxembourg  not  being 
represented  in  the  replies.  A  significant  number  of  responses  were  also  submitted  by 
European  and  international  bodies  and  associations.  Finally,  there  were  54  replies  from 
citizens who did not provide any information on their Member State of residence. 

Main findings 

The  issue  as  to  whether  the  current  IPR  Enforcement  Directive  is  fit  to  encounter  the 
challenges posed by the digital environment triggered responses from more than 70% of the 
stakeholders with very different points of view. These came from rightholders and collecting 
societies  on  the  one  hand  and  ISPs,  telecommunication  operators  and  –  to  a  large  extent  – 
individual citizens on the other. 

Rightholders  and  collecting  societies  almost  unanimously  criticized  the  shortcomings  of  the 
current legal regime as transposed into national law especially in terms of how it frames the 
role of intermediaries as well as its perceived failure to stem the increase in online copyright 
infringements,  whereas 
individual  citizens 
consistently  stressed  that  there  was  no  need  for  changing  the  current  Directive.  Some  ISPs 
stated that there were not enough statistics to prove that internet causes serious problems in 
terms of counterfeiting. 

telecommunication  operators  and 

ISPs, 

However, a clear majority of stakeholders who advocated a change of the current legal regime 
requested that such change should be in accordance with the already existing legal framework 
at  EU-level,  especially  to  ensure  coherence  with  the  provisions  and  definitions  of  the  E-
Commerce Directive.  

In particular, citizens expressed anxiety that a revision of the current Enforcement Directive 
would  lead  to  stricter  rules  which  would  interfere  with  net  neutrality  and  the  freedom  of 
speech. As for the Member States, only two saw the current regime as sufficient and suited to 

56 

 
 
 
 
 
 
 
combat online IPR infringement. The majority of the Member States considered the Directive 
partly inapt to solve IPR problems of the digital age.  

Those  respondents  in  favour  of  amending  the  current  Directive  specifically  stressed  the 
following issues: 

(1) Need for rules on the role of intermediaries 
The  majority  of  rightholders  and  collecting  societies  demanded  a  greater  involvement  of 
internet  service  providers  and  other  intermediaries,  identifying  them  as  key  actors  in 
combating IPR infringements in the digital world. While most of the rightholders were calling 
for  a  closer  cooperation  with  intermediaries,  only  a  few  of  them  actively  advocated  the 
implementation  of  filtering  /  monitoring  technologies  or  a  duty  of  care  principle  (e.g.  for 
intermediaries  that  actively  use,  present,  organise  or  modify  third  parties'  content  for 
commercial purposes). 

As for the separate issue of the liability of intermediaries, the vast majority of the stakeholders 
in  favour  of  amending  the  IPR  Enforcement  Directive  emphasized  the  need  to  keep  the 
current  liability-regime  established  by  the  E-Commerce  Directive.  Only  a  few  (mostly 
rightholders)  demanded  for  a  stricter  liability  regime  and  a  reform  of  the  safe-harbour 
principles. A problem that  was identified  with regard to  online-piracy as  well as the sale of 
counterfeit goods on internet-platforms was the issue of anonymity of users and the perceived 
lack of verification, by ISPs, of information provided by subscribers/customers, both of which 
were claimed to facilitate infringements these customers and thus and hinder enforcement. 

(2) Need for stricter rules on copyright infringement and file-sharing 
The  overwhelming  majority  of  rightholders  and  a  number  of  collecting  societies  called  for 
stricter rules on online copyright-infringement and peer-to-peer file sharing, claiming that the 
current Directive does not provide effective and expeditious measures to tackle online-piracy 
and that this deficiency in the legal framework was jeopardizing investment and innovation. 
An  issue  that  was  raised  by  several  rightholders  and  a  few  MS  was  the  need  for  improved 
cross-border enforcement. 

(3) Need for a level playing field for legal digital content 
Rightholders, while acknowledging that the supply of licit offers is a key factor in combating 
online-piracy,  claimed  that  such  services  cannot  be  developed  as  long  as  IPRs  are  not 
sufficiently protected in the online world. In particular broadcasting Rightholders rejected the 
idea that the current lack of licit offer was the main cause of digital piracy, arguing that most 
of  their  content  was  consumed  illegally  despite  existing  and  easily  accessible  legal 
alternatives. 

Contributors opposing changes to the current legal regime brought forward in particular the 
following the arguments: 

(1) Lack of sufficient data for evaluation 

57 

 
 
 
 
 
 
 
 
A  significant  number  of  stakeholders,  in  particular  ISPs,  telecommunication  operators  and 
certain  Member  States,  took  the  view  that  due  to  the  limited  experience  with  the 
implementation of the Directive as  well as the lack of statistical data and evidence, it is too 
early to review and amend the Directive at this stage. Especially ISPs argued that a premature 
introduction  of  stricter  enforcement  rules  would  have  a  chilling  effect  on  innovation  and 
undermine consumers' confidence in digital products. 

 (2) Increase in legal uncertainty 
In  particular  ISPs  and  other  online  intermediaries  emphasized  that  any  potential  revision  or 
reopening of the IPR Enforcement  Directive would jeopardize  the existing  balance between 
the  interests  of  rightholders,  users  and  intermediaries  and  create  legal  uncertainties.  They 
claimed  that  the  relationship  between  enforcement  provisions  against  infringements  on  the 
one hand and the limited liability regime and the prohibition of general monitoring obligations 
enshrined in the E-Commerce Directive on the other would risk becoming unclear. This view 
was to some extent shared by a number of Member States who argued that no new liability 
regime  and  no  new  definitions  in  the  IPR  Enforcement  Directive  were  needed  and  that 
establishing  more  precise  legal  requirements  for  the  enforcement  of  IPR  would  cause 
uncertainty for the actors involved.  

(3) Shortcomings of current licit offer 
Many stakeholders who opposed amending the current IPR Enforcement Directive, including 
ISPs, telecommunication operators and a majority of individual contributors, viewed the lack 
of  available  and  attractive  licit  offer  as  one  of  the  main  causes  for  online  piracy.  They 
considered  that  increasing  such  service  offers  would  constitute  a  feasible  alternative  to 
imposing more detailed enforcement measures. It was suggested that an appropriate role for 
the Commission might be to look at ways of encouraging discussions regarding pan-European 
licensing  of  content  and  market-driven  private  agreements  related  to  development  and 
implementation of technological solutions, such as those that exist today to protect premium 
content from unauthorized use, copying and distribution. 

 (4) Safeguarding the freedom (and free exchange) of information 
The  overwhelming  majority  of  individual  citizens,  consumer  protection  organisations  and 
academics  strongly  argued  against  any  further  (over)regulation  of  IPR  infringements, 
especially in the context of the online world. Filtering of content and monitoring traffic on the 
internet were perceived as threats to fundamental rights (freedom of speech, right to privacy) 
or even censorship and therefore clearly rejected. Amendments to the current Directive were 
viewed by individuals as aimed at limiting citizens' basic freedoms. 

58 

 
 
 
 
 
ANNEX III: PRACTICAL EXAMPLES AND ILLUSTRATIONS 

Illustration: variety of practices for awarding moral damages.  

From the report of the European Observatory on Counterfeiting and Piracy we observe 
different practices for awarding moral damages119: 

“In  Poland,  it  appears  that  moral  damages  may  not  attract  monetary  awards.  Examples 
where moral damages have been claimed include in particular where there has been injury to 
the  rightholder's  reputation,  emotional  distress,  suffering  caused  by  an  infringement,  etc. 
Damages for moral prejudice tend to be generally rather low. In some countries, it seems that 
damages  for  moral  prejudice  may  only  be  granted  in  copyright  cases  (excluding  owners  of 
industrial  property  rights)  and/or  to  physical  persons  (excluding  legal  entities).  Some 
countries do not explicitly mention the possibility of granting moral damages, although that 
does not automatically mean that these are not available. 
 In other countries, even if moral damages are allowed, there have been only a few instances 
where  moral  damage  has  been  taken  into  consideration  (Malta).  In  some  countries,  moral 
damages are  available  only in  cases of  intentional  or negligent  infringements (Finland). In 
Greece,  moral  damages  are  the  only  compensation  that  can  realistically  be  awarded  in 
trademark  cases.  It  appears  that  in  one  country  (Slovenia)  moral  damages  may  be  granted 
even if no material damages have been suffered (e.g. for mental distress)". 

Examples on difficulties for collecting evidence needed to calculate damages 

Germany - Trademarks:  

German law requires claimant to provide facts proving that in the normal course of business 
or in special circumstances, there is the probability that without the infringement his sales or 
turnover would have increased. That requires for the plaintiff to disclose internal figures and 
data which allows the court to make the causal link between the presumed infringement and 
the business profit. However, most rightholders are reluctant to disclose these internal figures.  

On  the  other  hand,  requesting  damages  on  basis  of  the  infringer´s  profits  is  equally 
burdensome. The scope of the damages is limited by the net profit that the infringer has made 
as  result of this illegal activity. For this, the plaintiff has  the burden of proof to  first  justify 
that  the  infringer  has  made  some  net  earnings,  relying  on  the  information  that  the  potential 
infringer  will  be  obliged  to  provide.  Secondly,  the  court  will  deduce  from  this  sum  the 
earnings which have been incurred by the infringer, such as production costs or marketing, or 
other  expenses  which  could  have  been  derived  from  technical  characteristics  of  the  product 
which  differ  from  the  original  one.  The  infringer  often  presents  a  poor  situation  of  his 
commercial  situation  by  stating  low  profits  or  even  losses  due  to  the  infringement,  which 
results in low level of damages awards to the right owner.  

119 http://ec.europa.eu/internal_market/iprenforcement/docs/damages_en.pdf (Page 4) 

59 

 
 
 
 
                                                            
In view of these difficulties, the most popular method for awarding damages in Germany is 
the  lump  sum  method,  since  they  require  no  figures  to  be  presented  to  the  court,  but  only 
confirmation of the infringement. The court estimates the amount of royalties that would have 
been agreed between parties by taking into account a relevant set of factors such as reputation 
of  the  infringed  IP,  intensity,  duration  and  extent  of  infringement,  and  degree  of  confusion. 
However, lump sums in Germany range between 1-5% of the total turnover of the infringer 
which can be attributed to the infringer product.  

France – Trademarks:  

One  of  the  main  reasons  for  French  courts  not  to  increase  the  award  of  damages  is  the 
inability of rightholders to establish their damages and to provide evidence. 

Even though since 2007 the infringer´s unfair profits can be taken into account for assessing 
the negative impact of an infringement, in practice, very few times they have been considered 
for assessing damages (see Paris Court of Appeal in Baccarat v Delsey). The main difficulty, 
again,  is  for  the  rightholder  to  establish  a  causal  link  between  the  net  profit  and  the 
infringement. On the other side, lump sums  methods spare the necessity to  collect evidence 
and elements of proof, as required by the other methods. 

France – saisie contrefaçon 

In France, the procedure of descriptive seizure serves an important twofold purpose, resulting 
in significant amendments to the procedure of “seizure for counterfeit” (saisie contrefaçon). 
Through  this  procedure,  infringers  are  prohibited  to  discard  the  allegedly  counterfeited 
objects, for a custodian to be appointed, for the objects to be placed under judicial seal, or for 
the  income  associated  with  the  alleged  counterfeit  to  be  made  the  object  of  a  conservatory 
seizure. Thus, through the first phase of description, this procedure gives the rightholder the 
possibility to obtain proof of the existence and extent of the counterfeit, whereas the second 
phase  of  optional  seizure  has  the  purpose  of  safeguarding  the  rights  of  the  holder  and 
of avoiding an aggravation of the damage pending a judgment on the merits of the case. 

Illustration  for  insufficient  compensation:  Gap  between  awarded  and  requested 
damages 

Darts-ip data show120 significant differences across Member States and IP titles between the 
amount requested for damages and the final amount awarded. This difference is significantly 
pronounced  for  IP  on  design.  Court  cases  litigated  in  France  and  the  Netherlands  only 
recovered,  on  average,  25%  and  30%  of  the  amount  requested  for  damages  respectively. 
Compared  to  the  Netherlands  and  Germany,  France  presents  a  considerably  low  level  of 

120 Data considered for analysis includes information on 3 Member States, France, Germany and the Netherlands, 
and covers three different IPR: Patents, Design and Trademark. Only court cases which included both requested 
and awarded information, have been included in the analysis.  

60 

 
 
                                                            
awarded damages, especially for Trademarks and Design titles.121 It’s interesting to note that 
in Germany, across the 3 different IPRs considered for the analysis, court cases recovered, on 
average, a significant share of the initial requested amount.  

The  (limited)  data  seems  to  confirm  the  problems  identified  by  the  stakeholders.  There  is 
a substantial difference between requested and awarded damages. 

From Darts-ip data we also observe that the usage of lump sums is one of the most frequent 
methodologies  to  request  and  award  damages  in  Germany  and  Denmark.  The  relevance  of 
lump sums is especially acute for trademarks, where this methodology was applied 83% and 
50% of the times in Germany and Denmark respectively.  

Gap between awarded and requested damages 

Accepted damages (%) - Trademark 

80%

60%

40%

20%

0%

80%
60%
40%
20%
0%

100%
80%
60%
40%
20%
0%

Mean Median Mean Median Mean Median

France

Netherlands

Germany

Accepted damages (%) - Patent 

Mean

Median

Mean

Median

France

Germany

Accepted damages (%) - Design 

Mean Median Mean Median Mean Median

France

Netherlands

Germany

121 The mean (63%) of requested damages for patents cases in France is quite different from the median (20%), 
probably  because  of  extreme  cases  moving  the  average  up.  This  difference  seems  to  indicate  that  the  gap 
between requested and awarded damages is also quite significant for patent court cases in France.  

61 

 
 
 
 
                                                            
Moral  damages  seem  not  to  be  used  for  any  IPR  in  Germany  or  the  Netherlands.  Only  in 
France,  were  the negative impact of infringements, including  moral  harm to  rightholders, is 
transposed and recognised by the law since 2007 (Article 716-14), non-material damages are 
frequently used, especially for trademarks and design rights (non-material used  52% and 69% 
of the times respectively). 

Frequency of use 

Trademark 

100%

80%

60%

40%

20%

0%

100%

80%

60%

40%

20%

0%

100%

80%

60%

40%

20%

0%

France

Germany

Netherlands

Loss of Profits

Recovery of Profits

Reasonable Royalty

Non material

Undefined

Patent 

France
Loss of Profits
Reasonable Royalty

Germany
Recovery of Profits
Non material

Design 

France

Germany

Netherlands

Loss of Profits

Recovery of Profits

Reasonable Royalty

Non material

Undefined

62 

 
 
 
 
Darts-ip data show that, non-material damages, which include moral damages, present one of 
the  biggest  difference  between  the  quantities  requested  for  damages  and  the  total  awarded 
(73%). This seems to indicate that even though moral damages are frequently used in France, 
there are still problems on the quantification of this methodology.    

Other categories, such as reasonable royalties (lump sums) and loss of profits also present big 
differences: on average, 59% and 58% of damages requested were rejected. Loss of profits is 
the methodology which shows the smallest gap, even though the rejection rate is not still quite 
significant: on average, 46% of the requested damages were rejected by the court.  

Gap between awarded and requested damages, by methodology 

100%

80%

60%

40%

20%

0%

Loss of
Profits

Recovery of
Profits

Reasonable
Royalty

Non
material

Undefined

Rejected damages (%) - mean

Awarded damages (%) - mean

Illustration on the different approaches to cost reimbursement: 

 

  According to expert opinion, the following estimates were made of the average proportion 
of  actual  costs  that  are  recovered  in  civil  IPR  cases:  10-50%  (Denmark),  only  a  small 
percentage  (Greece),  30%  (Italy),  between  10-30%  (Luxembourg),  50%  (Cyprus),  66%-
100% (Romania), very low (Spain), approx. 75% (Sweden), 50-70% (Austria), and 80% 
(Ireland)122. 
In the UK, only about 70% of a successful party’s actual costs are reimbursed on average, 
applying  also  a  cap  in  the  Intellectual  Property  Enterprise  Court  (IPEC)  by  stage  of 
litigation with the overall amount of costs that can be recovered capped at £50.000 (about 
€57.000).  
In  France  the  amounts  allocated  to  claimants  range  on  average  from  €10.000  to 
€30.000123, on average inferior from what is requested.  
In Cyprus, the expenses of any civil procedure will be upon the discretionary power of the 
court  and  the  court  has  full  power  to  decide  which  party  will  pay  which  amount  (while 
Article 14 of the Directive established the loser pays principle).  

 

 

122 "Damages in Intellectual Property Rights", European Commission, European Observatory on Infringements 
of Intellectual Property Rights, 2010 
123 "Comparative Study on damages allocated in the framework of counterfeiting procedures in France, UK and 
Germany”, Fidal, 2014 

63 

 
 
                                                            
  Spain  provides  for  full  reimbursement.  Spanish  law  distinguishes  however  between 
statutory (e.g. attorneys’ fees established by law and court costs) and non-statutory costs 
(e.g. expert costs). The rule for full reimbursement applies only to the statutory costs.  

64 

 
 
 
ANNEX IV: CONTEXT 

1) Legal context 

The  current  EU  regulatory  framework  provides  for  a  number  of  instruments  for 
the enforcement of IPR.  

Directive on the enforcement of intellectual property rights 

The  Directive  on  the  enforcement  of  intellectual  property  rights  ("Directive",  "Enforcement 
Directive")124 provides for measures, procedures and remedies for the enforcement of IPR in 
civil  law  proceedings  (civil  remedies)  and  covers  all  types  of  IPR  provided  for  by  EU  law 
and/or by the national law of the Member State125. While the objective of the Directive is to 
approximate  legislative  systems  so  as  to  ensure  a  high,  equivalent  and  homogeneous  level 
of protection  in  the  internal  market  (Recital  10),  it  only  contains  minimum  harmonisation 
rules, in the sense that the Directive is without prejudice to the means which are or may be 
provided for in EU or national legislation, in so far as those means may be more favourable 
for  rightholders  (Article  2(1)).  Within  this  context  the  Directive  aims  to  approximate  the 
measures,  procedures  and  remedies  necessary  to  ensure  the  enforcement  of  intellectual 
property rights (Article 1). This includes general obligations and specific provisions on legal 
standing, evidence, interlocutory measures, seizures and injunctions, damages and legal costs 
and judicial publication. 

Other IP enforcement related instruments 

Secondly,  instruments  of  substantive  EU  IP  law  can  also  contain  enforcement-related 
provisions. 

The  Directive  complements  Article  8  of  the  Information  Society  Directive126  as  regards 
copyright,  which  sets  out  that  Member  States  shall  provide  appropriate  sanctions  and 
remedies in respect of infringements of the rights and obligations set out in this Directive and 
shall take all the measures necessary to ensure that those sanctions and remedies are applied. 
The  sanctions  thus  provided  for  shall  be  effective,  proportionate  and  dissuasive.  It  also 
establishes  that  each  Member  State  shall  take  the  measures  necessary  to  ensure  that 
rightholders whose interests are affected by an infringing activity carried out on its territory 
can bring an action for damages and/or apply for an injunction and, where appropriate, for the 
seizure  of  infringing  material,  devices,  products  or  components,  and  shall  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 or related right. 

125  Cf.  Statement  2005/295/EC  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  (OJ  L  94 of 
13.4.2005) provides a list of IPRs  which the Commission considers at least to be covered by the scope of the 
Directive. 
126 Directive 2001/29/EC on copyright and related rights in the information society 

65 

 
                                                            
 
The  Community  Design  Regulation127  and  the  European  Union  Trade  Mark  Regulation128 
contain rather detailed rules on the designation of specialised national courts, applicable law, 
jurisdiction, sanctions and provisional and protective measures.  

The  Official  Food  and  Feed  Control  Regulation129  is  relevant  to  the  enforcement  of  GIs 
through  market  surveillance  and  controls  on  production  of  agricultural  products  and 
foodstuffs, including correct deployment of GIs. 

Council  Regulation  2100/94  on  community  plant  variety  rights  contains  rules  on  the 
entitlement to bring an action for infringement and right of any person enjoying exploitation 
rights  to  intervene  in  an  infringement  action  for  the  purpose  of  obtaining  compensation  for 
damage suffered. Pursuant to the implementing rules, there is, moreover, an obligation to pay 
damages  covering  at  least  a  lump  sum  calculated  on  the  basis  of  the  quadruple  average 
amount  charged  for  the  licensed  production  of  a  corresponding  quantity  in  certain  cases  of 
repeated and intentional non-compliance130. 

Article 7 of the Directive 2009/24 on the legal protection of computer  programs establishes 
that  Member  States  shall  provide,  in  accordance  with  their  national  legislation,  appropriate 
remedies  against  a  person  committing  certain  acts  related  to  the  circulation  or  possession 
of infringing  copies  or  means  of  technological  circumvention  of  computer  programs. 
The seizure of infringing copies of computer programs is also provided for in accordance with 
the legislation of the Member State concerned.  

Article 12 of the Directive 96/9 on the legal protection of databases establishes that Member 
States shall provide appropriate remedies in respect of infringements of the rights provided for 
in this Directive. 

The Directive should further be understood against the background of certain other provisions 
of  EU  law  that  can  have  an  impact  on  the  enforcement  of  intellectual  property  rights. 
Regulation 608/2013131 (“Customs Enforcement Regulation”) provides, for instance, the basis 
for  cooperation  between  private  parties  holding  IPRs  and  the  customs  authorities 
of the Member  States. The e-Commerce  Directive132 also contains rules that can  be relevant 
in the context  of  IPR  enforcement,  especially  in  relation  to  liability  of  online  intermediaries 
in relation to IPRs' infringements. 

International context 

127 Council Regulation (EC) No 6/2002 on Community designs 
128 Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending 
Council  Regulation  (EC)  No  207/2009  on  the  EU  trade  mark  and  Commission  Regulation  (EC)  No  2868/95 
implementing Council Regulation (EC) No 40/94 on the EU trade mark, and repealing Commission Regulation 
(EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and 
Designs) 
129 Regulation (EU) 2017/625 of 15.3.2017. 
130  Art.  18(2)  Commission  Regulation  (EC)  No  1768/95  implementing  rules  on  the  agricultural  exemption 
provided for in Article 14(3) of Council Regulation (EC) No 2100/94 on Community plant variety rights 
131 Regulation (EU) No 608/2013 concerning customs enforcement of intellectual property rights 
132 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 

66 

 
                                                            
It is necessary to take into account the international context for IPR enforcement, notably the 
work  carried  out  by  the  Commission  in  the  context  of  multilateral  efforts  to improve  the 
international IPR framework, including by leveraging high-level trade and political dialogues 
to ensure progress on identified IPR issues, promoting the ratification of relevant IPR treaties 
by  all  EU  Member  States  and  ensuring  that  the  IPR  chapters  in  bilateral  trade  agreements 
offer adequate and efficient protection for rightholders and address key weaknesses in partner 
Member  States'  IPR  systems  while  calibrating  commitments  to  third  countries’  level  of 
development. 

The substantive rules on the protection of specific intellectual property rights were introduced 
by number of international agreements such as the Conventions of Paris (1883), Berne (1886), 
and  Rome  (1961).  Conventions  containing  provisions  indirectly  requiring  appropriate 
enforcement  measures  in  any  country  that  is  a party  to  these  conventions.  However,  these 
conventions leave it basically to these countries to provide for enforcement provisions. 

The  Agreement  on  Trade-Related  Aspects  of  Intellectual  Property  Rights  (“TRIPS 
Agreement”) is especially relevant. This Agreement was concluded in the context of the WTO 
and  is  applicable  to  all  WTO  members,  including  the  EU  and  all  its  Member  States.  Apart 
from setting out general obligations and certain substantive rules on the protection of IPR, it 
also contains rules on the enforcement of IPR by private parties. The Directive is based on the 
TRIPS provisions, since it was one of the measures through which the EU gave effect to its 
obligations under the TRIPS Agreement and this connection was noted in the Commission's 
explanatory memorandum to its proposal of the Directive. 

2) Economic context 

Intellectual  property  rights  in  their  different  forms  are  important  assets  allowing  the  EU 
companies  to  grow.  About  half  of  the  EU  industries  are  IPR-intensive133.  The European 
Union Intellectual  Property  Office  ("EUIPO")  has  estimated  that  IPR-intensive  sectors 
account for 39% of EU GDP and 35% of all jobs134. Companies that own IPRs perform better 
in economic terms than those that do not135. However, large companies are four times more 
likely  to  own  IP  rights  than  smaller  companies;  40%  of  larger  firms  have  registered  rights, 
compared with 9% of SMEs136. The results further demonstrate that businesses that own IPRs 
generate  more  revenue  per  employee  than  those  that  do  not,  have  more  employees  and  pay 
higher salaries to their workers and that this relationship is particularly strong for SMEs.  

However, these positive achievements of IP need to be seen in the context of increasing levels 
of IPRs' infringements. IP-infringing activities, in particular those carried out on a commercial 
scale (where the infringer makes money on the back of the rightholder's investment), dissuade 
investment in innovation, undermine job creation and put consumers and businesses at risk. A 

133 This reflects the omnipresence of IPRs in the EU economy, with engineering activities, real estate activities, 
financial and insurance activities, manufacture of motor vehicles, retail, computer and pharmaceutical activities 
among the 20 largest IPR-intensive industries in Europe. 
134  Study on the contribution made by IPR-intensive industries to the EU economy, EUIPO-EPO 2013 
135  Study on IPR and firm performance in Europe, EUIPO 2015 
136 IP SME scoreboard, EUIPO 2016 

67 

 
                                                            
recent study demonstrated that trade in counterfeit and pirated goods amounted to up to 2.5 % 
of world trade or as much as USD 461 billion in 2013 (compared with 1,9 % in 2009). This 
was even higher in the EU context where counterfeit and pirated goods amounted to up to 5 % 
of imports or as much as EUR 85 billion137.  

Estimating  the  economic  loss  attributable  to  commercial  scale  IP  infringement  problem  is 
difficult, but this negative economic is widely recognised138. A recent update of a global fraud 
report  surveying  around  800  senior  executives  reported  that  37%  of  their  companies  found 
themselves exposed to IP theft139.  

At EU level, statistics recently published by the Commission show a continuation of the trend 
in the high number of shipments suspected of violating intellectual property rights. Customs 
authorities across the EU seized an estimated five million more counterfeit items in 2015 than 
the  previous  year.  More  than  40  million  products  suspected  of  violating  an  intellectual 
property  right  were  detained  at  the  EU's  external  borders,  with  a  value  of  nearly  €650 
million140. An  estimated five million more counterfeit items  were  detained in  2015 than the 
previous  year,  meaning  that  the  number  of  intercepted  goods  grew  by  15%  compared  to 
2014.141 

Among SMEs that have registered at least one IPR, almost one in three (31 %) has suffered 
from  IPR  infringement.  This  proportion  increases  with  the  size  of  the  SME,  with  medium-
sized  SMEs  being  affected  most  (39  %)  and  micro  SMEs  suffering  least  from  IPR 
infringements (24 %).142   

The  EUIPO  in  a  series  of  sectorial  studies  estimated  the  scope,  scale  and  impact  of  IPR 
infringements in the EU143: More than 12% of sales are lost in sectors such as toys and games 
or  handbags  and  luggage.  The  total  sales  lost  due  to  IPR  infringements  in  nine  sectors 
analysed144 amounted to €35 billion including clothes, accessories and footwear sector sales 
loss of €17 billion. The damage suffered by businesses because of counterfeiting and piracy 
also has a significant impact on the volume of employment they offer in the EU. According to 
the EUIPO estimates direct and indirect job losses in nine analysed sectors amounted to more 
than 786 thousand jobs lost. Counterfeiting and piracy and other IPR infringements also cost 
the  state.  First,  such  activity  results  in  a  loss  of  tax  revenue  and  social  contributions. 
The government revenue lost in the same nine sectors amounted to €14.4 billion. 

137   "Trade in Counterfeit and Pirated Goods", OECD-EUIPO 2016 
138  Measuring  IPR  infringements  in  the  Internal  Market,  "Development  of  a  new  approach  to  estimating  the 
impact of infringements on sales", Rand 2013 
139  Kroll Global Fraud Report 2015-2016 
140 Report on EU customs enforcement of intellectual property rights: results at the EU border 2015 
141 Ibid. 
142  
of Intellectual Property Rights, 2016 
143  
144 I.e. cosmetics and personal care, clothing, accessories and footwear, sports good, toys and games, handbag 
and luggage, jewellery and watches, recorded music, spirits and wine. 

"Intellectual  Property  SME  Scoreboard  2016",  EUIPO,  European  Observatory  on  Infringements 

https://euipo.europa.eu/ohimportal/en/web/observatory/quantification-of-ipr-infringement  

68 

 
                                                            
Industry  has  estimated  that,  in  just  one  Member  State  (Spain),  in  2016  there  were  4.128 
billion illegal accesses to content, with a value of 23.294 billion euros and a yearly increase 
of 6,8%  in  lost  profits  by  the  cultural  and  content  industries  amounting  to  1.783  billion 
euros145. 

Among SMEs that have registered at least one IPR, almost one in three (31 %) has suffered 
from  IPR  infringement.  This  proportion  increases  with  the  size  of  the  SME,  with  medium-
sized  SMEs  being  affected  most  (39  %)  and  micro  SMEs  suffering  least  from  IPR 
infringement (24 %).146   

In  conclusion,  IPR  infringing  activities  undermine  growth  and  sustainable  job  creation  by 
innovative and creative companies in the Internal Market. These same companies (including 
start-ups) are at the core of the EU's knowledge based economy and its future competitiveness 
on the world stage. 

3) Policy context 

Due  to  the  late  transposition  of  the  Directive147,  its  first  evaluation  took  place  in  2010. 
The 2010  Evaluation  Report148  and  its  accompanying  staff  working  document149  provided 
an initial indication on the functioning of the Directive. The main conclusion drawn from this 
first  evaluation  was  that  the  Directive  has  had  a  substantial  and  positive  effect  on 
the protection of intellectual property rights by civil law in Europe.  

However,  the  conclusions  have  also  shown  that  certain  provisions  of  the  Directive  were 
construed  in  different  ways  in  different  Member  States  and  this  had  given  rise  to  different 
interpretations and applications in practice. It has also become apparent that the Directive was 
not  designed  with  the  challenge  posed  by  the  Internet  to  the  enforcement  of  intellectual 
property  rights  in  mind.  In addition,  several  issues  could  deserve  further  attention.  Among 
them,  one  could  mention  the  use  of  provisional  and  precautionary  measures  such  as 
injunctions,  procedures  to  gather  and  preserve  evidence  (including  the  relationship  between 
the  right  of  information  and  protection  of  privacy),  clarification  of  the  meaning  of  various 
corrective measures, including the costs of destruction, and calculation of damages. 

With the adoption of the Report, the Commission launched a public consultation with a view 
to  informing  the  Commission's  decisions  on  any  possible  future  measure  and  to  feed 
the related  impact  assessment  work.  The  deadline  for  the  public  consultation  expired  on 
31 March  2011.  A  public  hearing  was  held  in  June  2011  and  a  synthesis  document  on 

145  Piracy  Observatory  and  Digital  Contents  Consumption  Habits  2016  –  GfK  study  available 
at http://lacoalicion.es/observatorio-de-la-pirateria/observatorio-de-la-pirateria-2016/ 
146  "Intellectual  Property  SME  Scoreboard  2016",  EUIPO,  European  Observatory  on  Infringements  of 
Intellectual Property Rights, 2016 
147  While  the  Directive's  implementation  deadline  was  29  April  2006,  the  Member  States  implemented 
the Directive over a range of years up to 2009. 
148  Report  from  the  Commission  "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)0779 final) 
149  Analysis  of  the  application  of  Directive  2004/48/EC  on  the  enforcement  of  intellectual  property  rights 
in the Member States (SEC(2010)1589 final) 

69 

 
                                                            
the responses  to  the  public  consultation  published  in  July  2011150.  After  this  consultation, 
a conference  for  Member  States  and  stakeholders  was  held  in  April  2012,  and  a  public 
consultation  on  the efficiency  of  proceedings  and  accessibility  of  measures  for  the  civil 
enforcement of IPRs was held in 2013. In November 2013 the consultation on the review of 
the Copyright legal framework took place, and included several questions on enforcement151.  

As  the  above  mentioned  assessment  of  the  Directive's  functioning  was  being  carried  out, 
the Anti-Counterfeiting  Trade  Agreement  (ACTA)  was  being  negotiated.  ACTA  was 
a multinational  treaty  on  IPR  enforcement  the  negotiation  of  which  proved  to  be 
controversial,  until  first  the  European  Parliament  in  July  2012  and  then  the European 
Commission in December 2012 decided that ACTA should not be signed by the EU. In the 
wake of these events, the envisaged plans to review the Directive were postponed for the time 
being. 

In July 2014 the Commission adopted the IPR enforcement Action Plan152, establishing a new 
consensus  on  the  enforcement  of  IPRs  through  strictly  non-legislative  measures.  With  this 
Action  Plan  the  Commission  re-orientated  its  policy  for  IP  enforcement  towards  a  better 
compliance of IPRs by all economic actors. Rather than penalising the citizen for infringing – 
often  unknowingly  –  IPRs,  the  actions  set  out  in  this  Action  Plan  pave  the  way  towards 
a “follow the money approach”, seeking to deprive commercial scale infringers of the revenue 
flows that draw them into such activities. However, notwithstanding these measures focusing 
on  commercial  scale  infringements  (such  as  the  development  of  voluntary  agreements,  as 
already  foreseen  in  the  Directive  (Article  17)),  the  question  of  whether  the  EU  legislative 
framework for the enforcement of IPR is still fit for purpose was left unanswered.  

In response to the Action Plan, the other Institutions called on the Commission to look at this 
very question. 

The  Council  recalled153  that  several  other  aspects  of  IPR  enforcement  not  contained  in 
the Action  Plan  raised  questions,  including  the  use  of  tools  available  to  identify  IPR 
infringers;  the  role  of  intermediaries  in  assisting  the  fight  against  IPR  infringement;  and 
the allocation  of  damages  in  IPR  disputes.  The  Council  encouraged  the  Commission 
to consider all possible options to address these matters. 

The European Parliament called154 on the Commission to come up with a detailed assessment 
of  the  limitations  of  the  current  legal  framework  as  regards  online  activities  and, 
if appropriate,  with  proposals  for  adapting  the  EU  legislative  framework  to  the  internet 
environment. 

150    Report  from  the  Commission  "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)0779 final) 
151 Available at http://ec.europa.eu/internal_market/consultations/2013/copyright-rules/index_en.htm 
152  Communication  from  the  Commission  "Towards  a  renewed  consensus  on  the  enforcement  of  Intellectual 
Property Rights: An EU Action Plan" (COM(2014)0392 final) 
153 Conclusions of the Council of the European Union of 5 December 2014 on IPR enforcement (15321/14)  
154  Report  of  the  European  Parliament  of  9  June  2015  "Towards  a  renewed  consensus  on  the  enforcement 
of Intellectual Property Rights: An EU Action Plan" (2014/2151(INI)) 

70 

 
                                                            
The  May  2015  Digital  Single  Market  Strategy  (DSM)155  states  that  "the  Commission  will 
make legislative proposals […] in 2016 […] modernising enforcement of intellectual property 
rights,  focusing  on  commercial-scale  infringements  (the  "follow  the  money"  approach)  as 
well  as  its  cross-border  applicability,  notably  with  regard  to  copyright  issues".  Following 
the opinion of the European Parliament, the Commission clarified its intention to modernise 
this  framework  in  the  Single  Market  Strategy  of  28  October  2015156,  making  it  clear  that 
initiatives  to  modernise  the  intellectual  property  rights  framework  would  be  horizontal,  and 
encompass all types of IPRs privileging a "follow the money" approach to commercial-scale 
infringements,  which  would  also contribute  to  promoting  a  fair  Single Market  and the  fight 
against fraud. 

This  intention  was  also  mentioned  in  the  Communication  on  a  modern,  more  European 
copyright framework157 and the Communication on a fair, efficient and competitive European 
copyright-based economy in the Digital Single Market158. 

As  a  result,  on  9  December  2015  the  Commission  has  launched  public  consultation  on 
the evaluation  and  modernisation  of  the  legal  framework  for  the  enforcement  of  intellectual 
property  rights.  An  external  study  providing  support  for  an  ex-post  evaluation  of  the 
Enforcement Directive ("Evaluation Study")159, was also commissioned. 

Conclusions  from  the  public  consultation  and  the  Evaluation  Study  served  as  a  basis  for 
the Evaluation Report160 prepared by the Commission. 

155 Communication from the Commission "A Digital Single Market Strategy for Europe" (COM(2015) 192 final) 
156  Communication  from  the  Commission  "Upgrading  the  Single  Market:  more  opportunities  for  people  and 
business" (COM(2015) 550 final) 
157  Communication  from  the  Commission  "Towards  a  modern,  more  European  copyright  framework" 
(COM(2015)626) 
158 Communication from the Commission "Promoting a fair, efficient and competitive European copyright-based 
economy in the Digital Single Market" (COM(2016)592) 
159  "Support  study  for  the  ex-post  evaluation  and  ex-ante  impact  analysis  of  the  IPR  enforcement  directive 
(IPRED)", Technopolis Group in a consortium with EY and Schalast Rechtsanwälte, 2017 [Add reference to the 
publication] 
160 Commission Staff Working Document – Evaluation of the Directive 2004/48/EC of the European Parliament 
and of the Council of 29 April 2004 on the enforcement of intellectual property rights, COM(2017)xxx. 

71