Source: EURLEX
Language: en
Format: md

2 . 9 . 93 No C 238 / 9
Official Journal of the European Communities

###### II

( Preparatory Acts )

# COMMISSION

Proposal for a Council Regulation ( EEC ) laying down measures to prohibit the release for free

circulation or transit of counterfeit and
, export pirated goods

#### ( 93 / C 238 / 15 )

COM(93 ) 329 final

( Submitted by the Commission on 16 August 1 993 )

THE COUNCIL OF THE EUROPEAN COMMUNITIES
, their release for free circulation in the Community and
to introduce an appropriate procedure enabling the

customs authorities to act to ensure that such a

to the the can be enforced
Having regard Treaty establishing European prohibition properly ;

Economic Community and in particular Article 113
thereof
,

Whereas action by the customs authorities to prohibit the

to the from the Commission
Having regard proposal,

release for free circulation of counterfeit or
pirated
should also to the of such
goods apply export goods
from the Community and to those which are carried

under a transit
procedure ;
Having regard to the opinion of the European
Parliament
,

Whereas the Community should take into account the

Having regard to the opinion of the European Economic
and Social Committee
,

terms of the draft GATT on trade-related
agreement

intellectual issues trade in counterfeit

and Social Committee, property, including

in the measures to be taken at the
goods, particular
frontier
;

### Whereas Council Regulation ( EEC ) No 3842 / 86 of 1

December 1986 laying down measures to prohibit the
release for free circulation of counterfeit goods (') has
been in force since 1 1988 whereas conclusions
January ;

should be drawn from experience gained during the early
years of its implementation with a view to improving the

of the instituted thereunder
operation system ;

Whereas the marketing of counterfeit goods and pirated

­
causes considerable to manu
goods injury law-abiding

facturers and traders and misleads consumers whereas
,
such goods should as far as possible be prevented from
being placed on the market and measures should be

adopted to that end to deal effectively with this unlawful
activity without impeding the freedom of legitimate
trade whereas this is also
, objective being pursued

­
through efforts being made along the same lines at inter

national level
;

Whereas in so far as counterfeit or pirated goods are

from third countries it is to
imported important prohibit

­
Whereas it must be stipulated that the customs auth

orities are to take decisions on
empowered applications

for action to be taken that are submitted to them
;

Whereas action by the customs authorities must consist

either in suspending the release for free circulation or the
of of counterfeit or
export goods suspected being pirated
or in seizing such goods when they are carried to the
under transit for as as is
Community procedure, long
to enable it to be determined whether the
necessary
are counterfeit
goods actually ;

Whereas the objective to be achieved by the introduction

of such a procedure does not require the drawing up of

Community provisions either as regards the designation
of the to determine whether
judicial authority competent
the entered for free circulation or for or
goods export
seized a transit are counterfeit or
during procedure
or as the to be followed for
pirated, regards procedures

O OJ No L 357, 18 . 12 . 1986, p. 1 . referral to that authority ; whereas in the absence of

No C 238 / 10
Official Journal of the European Communities 2 . 9 . 93

rules on the the said
Community subject competent
should furthermore decide cases submitted to it
authority
by reference to the criteria which are used to determine
whether goods produced in the Member State concerned

intellectual
infringe property rights ;

Whereas it is to determine the measures to be
necessary

applied to goods entered for free circulation or for
or carried under a transit where it is
export procedure
established that are counterfeit or whereas
they pirated ;
those measures must not only deprive those responsible
for trading in such goods of the economic benefits of the
transaction but also constitute an effective deterrent to

further transactions of the same kind
;

Whereas in order to avoid serious disruption to the

clearing of goods contained in travellers ' personal
it is to exclude from the of this
luggage, necessary scope
which be counterfeit or
Regulation goods may pirated
which are imported from third countries within the limits

laid down rules in of relief from
by Community respect
customs
duty ;

Whereas uniform application of the common rules laid

down this must be ensured and to that
by Regulation
end a Community procedure must be established
enabling measures implementing these rules to be
within
adopted appropriate periods ;

Whereas it will be appropriate to consider the possibility

of increasing the number of intellectual property rights
covered this in the inter alia of the
by Regulation light,,
in its
experience gained implementation ;

## Whereas Regulation ( EEC ) No 3842 / 86 should

therefore be
repealed,

HAS ADOPTED THIS REGULATION :

CHAPTER I

General

Article 1

1 . This down :
Regulation lays

( a ) the conditions under which the customs authorities

­
shall take action where goods entered for free circu
lation or for are of
export suspected being

counterfeit or or where such are
pirated goods
carried under a transit
procedure ;

and

i,

( b ) the measures which shall be taken by the competent

authorities with regard to those goods where it has
been established that are indeed counterfeit or
they

.
pirated

2 . For the purposes of this Regulation :

a ' counterfeit ' means :
( ) goods

—
the thereof
goods, including packaging,, bearing

without authorization a trademark which is
identical to the trademark validly registered in
of the same or which
respect type pf goods,
cannot be in its essential
distinguished aspects
from such trademark and which
, thereby
infringes the rights of the owner of the
trademark in under law or
question Community
the law of the Member State where the
application for action by the customs authorities
is made
,

r .

—
trademark whether or not
any symbol ( logo ),

in the same circumstances
presented separately,

as the referred to in the first indent
goods ;

—
tool mould or similar material
any, specifically

intended for the manufacture of a counterfeit
trademark or of a product bearing such a
trademark such tools moulds or
, provided,
materials infringe Community law or the law of
the Member State where the application for

action the customs authorities is made
by ;

—
packaging materials bearing the trademarks of

counterfeit in the
products, presented separately,
same circumstances as the referred to in
goods
the first indent
;

( b ) ' pirated goods ' means goods made without the

­
consent of the holder of the or
copyright neigh
or of the holder of a
bouring rights, design right,
whether or not under national law or of a
registered,

authorized him in the of
person duly by country
and which are made or
production directly indirectly

from an article where the of those
, making goods
would have constituted an infringement of the right

in question under Community law or the law of the
Member State where the application for action by
the customs authorities is made
;

t

2 . 9 . 93 Official Journal of the European Communities No C 238 / 11

( c ) ' owner or holder of a right ' means the owner of a
## trademark as referred to in a and / or one of the

, ( ),

­
rights referred to in ( b ), or any other person autho
#### rized to use the trademark and / or or their

rights,
representative ;

/

«

i

( d ) ' transit ' means the external transit procedure referred

to in Article 91 of Council Regulation ( EEC ) No
## 2913 / 92 of 12 October 1992 establishing the

Community Customs Code ( 1 ).

3 . This Regulation shall not apply to goods which
bear a trademark with the consent of the owner of that

trademark or which are a or
protected by copyright
neighbouring right or a design right and which have
been made with the consent of the holder of the right

but which are entered for free circulation or for
export
without the owner 's or the holder 's consent .

Nor shall it apply to goods referred to in the first
entered for free circulation or for
subparagraph export
which bear a trademark under conditions other than

those with the owner of the in .
agreed rights question

CHAPTER II

Prohibition of the release for free circulation or
, export

transit of counterfeit goods and pirated goods

Article 2

The release for free circulation or under
, export carriage

a transit of found to be counterfeit or
procedure goods
pirated on completion of the procedure provided for in
Article 5 shall be .
prohibited

CHAPTER III

Application for action by the customs authorities

4

A rticle 3

1 . In each Member State an owner or holder of a
,
right may lodge an application in writing with the

for the release of counterfeit or
competent authority
pirated goods entered for free circulation or for export

­
in that Member State to be refused by the customs auth
orities or for the seizure of such where are
goods they

carried to that Member State under a transit
procedure,
where he has valid grounds for suspecting that the

or under a transit
importation, exportation carriage
procedure of such counterfeit or pirated goods is
contemplated in that Member State .

      ">.)

0 OJ No L 302 19 . 10 . 1992 . 1 .
),, p

­
For the of this Article ' entered for free circu
purposes,
lation ' and and ' for ' mean entered on the basis of
export
declarations made in writing or orally or by any other

means .

2 . The application referred to in paragraph 1 shall
contain :

—
a detailed of the to
sufficiently description goods

­
enable them to be recognized by the customs auth
orities and
,

\

—
proof that the applicant is the owner or holder of the

for the in .
right goods question

The owner or holder of the right must also provide all

other pertinent information available to him to enable
the to act on the in full
competent authority application

­
of the facts without however this infor
knowledge,,,
mation being a condition of admissibility of the

.
application

As this information shall
regards pirated goods,,
wherever contain the :
possible, following

—
the place where the goods are situated or the

intended destination
,

—
the or
particulars identifying consignment packages,

—
scheduled date of arrival or of the
departure goods,

—
the means of used
transport,

—
the of the or .
identity importer exporter

3 . The application must specify the ( length of the
which the customs authorities are
period during
to take action .
requested

4 . The applicant may be charged a fee to cover the
administrative costs incurred in dealing with the
application . The fee must be commensurate with the
costs incurred and must not have the effect of deterring
the .
applicant

5 . The authority with which an application drawn up
to 2 has been shall take a
pursuant paragraph lodged
decision on the application and shall immediately notify

the in of that decision .
applicant writing

Where the is it shall the
application granted, specify

period during which the customs authorities shall take

action . That the owner
period may, upon application by
or holder of the be extended the
right, by authority
which took the initial decision .

Refusals to an must contain the reasons
grant application
for the refusal and shall be to .
open appeal

6 . Member States may require the owner or holder of
a where his has been or where
right, application granted,

No C 238 / 12 Official Journal of the European Communities 2 . 9 . 93

the release of a of is or
consignment goods suspended
the goods are seized whilst under a transit procedure
to Article 5 1 to a :
pursuant ( ), provide security

—
to cover on his vis-a-vis the
any liability part

or the involved in the
importer, exporter persons
transit procedure where the procedure initiated
pursuant to Article 5 ( 1 ) is discontinued owing to an

act or omission by the owner or holder of the right
or where the in are
goods question subsequently
found not to be counterfeit or
pirated,

—
to ensure of the costs incurred in
payment
accordance with the provisions of this Regulation in
keeping the goods under customs control pursuant to
Article 5 .

The security must not be such as to constitute an undue

deterrent to or this .
initiating implementing procedure

7 . The owner or holder of the shall be to
right obliged
inform the authority referred to in paragraph 1 should
the right cease to be validly registered or should it

.
expire

8 . Member States shall designate the customs
department competent to decide on the application
referred to in this Article .

Member States in addition to the
may, department
referred to in the first another
subparagraph, designate

as the to decide on the
authority authority competent

.
application

Article 4

The decision the the owner or
granting application by

holder of the right shall be forwarded immediately to the
customs offices of the Member State which are liable to

be concerned with or transit
imports, exports operations

the counterfeit or referred to in
involving pirated goods
the .
application

CHAPTER IV

Conditions governing action by the customs authorities
and the to take a substantive
by authority competent

decision

A rticle 5

1 . Where a customs office to which the decision
granting an application by the owner or holder of a right
has been forwarded to Article 4 is satisfied
pursuant,
after the where that
consulting applicant necessary,
entered for free circulation or for or which
goods export

are under a transit procedure correspond to the
description of the counterfeit or pirated goods contained
in that decision it shall release of the or
, suspend goods
seize them .

The customs office shall immediately inform the
authority which decided on the application in
accordance with Article 4 . The customs office or the
,
which decided on the
competent authority application,
shall inform the the
immediately person making entry

and the who for action to be taken .
person applied

­
Without prejudice to the protection of confidential infor

mation shall afford the and the
, they applicant importer,
the or the involved in the transit
exporter persons
procedure the opportunity to inspect the goods the

release of which has been suspended or which have been

seized .

When examining the goods the customs office may take

in order to the .
samples expedite procedure

2 . The law in force in the Member State in whose

the were entered for free circulation or
territory goods
for or where were seized a transit
export they during
shall as :
operation apply regards

( a ) the referral to the authority competent to take a

substantive decision and inform without delay the
customs office specified in paragraph 1 of such
referral unless referral is undertaken that customs
, by
office
;

b the decision to be taken that .
( ) reaching by authority

In the absence of rules in this
Community regard,
the criteria to be used in reaching that decision shall
be the same as those used to determine whether
goods produced in the Member State concerned
infringe the rights of the owner or holder . Reasons
shall be given for decisions adopted by the

.
competent authority

Article 6

1 . If within ten of notification of
, working days
of release or of seizure the customs office
suspension,
referred to in Article 5 ( 1 ) has not been informed that
the matter has been referred to the
authority competent
to take a substantive decision on the case in accordance
with Article 5 ( 2 ) or that the duly empowered authority

has interim measures the shall be
adopted, goods
released all the or formalities
, provided import export

have been with and the seizure has been lifted .
complied

2 . In the case of goods suspected of infringing design
the owner the or the of the
rights,, importer consignee
goods shall be able to have the goods in question
released or their seizure lifted of a
, against provision
that :
security, provided

—
the customs office referred to in Article 5 ( 1 ) has

been informed within the time limit referred to in
,
1 of this Article that the matter has been
paragraph,

referred to the to take a
authority competent
substantive decision referred to in paragraph 1 of this
Article
,

—
on of the time limit the
expiry, authority empowered

for this has not interim measures
purpose imposed,

and

2 . 9 . 93 No C 238 / 13
Official Journal of the European Communities

—
all the import or export formalities have been

.
completed

The must be sufficient to the interests of
security protect

the owner or holder of the right . Payment of the security

shall be without to the other actions to
prejudice open
the owner or holder of the right . The security shall be
released if that does not exercise his to
person right

institute legal proceedings within 20 working days of the
date when he is notified of the of release or
suspension
the seizure .

3 . The condidions governing storage of the goods
during the period of suspension of release or seizure
shall be determined by each Member State .

CHAPTER V

Provisions to found to be counterfeit or
applicable goods

pirated goods

A rticle 7

2 . The counterfeit or pirated goods may be handed
over to the . In that case the
public exchequer, provisions

of a of 1 shall .
point ( ) paragraph apply

3 . Without prejudice to the protection of confidential
information the customs office concerned or the
,
shall inform the owner or holder of
competent authority
the of the names and addresses of
right, upon request,

­
the of the or of the manu
consignor, importer exporter,
facturer and of the consignee of the goods found to be

counterfeit or pirated and of the quantity of the goods in

.
question

CHAPTER VI

Final provisions

Article 8

1 . Without prejudice to the other rights of action
to the owner of a trademark which has been found
open

­
to be counterfeit or the holder of a or
copyright neigh
or a which has been found to
bouring right design right

1 . Save as otherwise provided by the law of the

to the owner of a trademark which has been found
open

Member State concerned the of an

­, acceptance
to be counterfeit or the holder of a or
copyright neigh

application drawn up in accordance with Article 3 ( 2 )

or a which has been found to
bouring right design right

shall not entitle the owner or holder of a to
right

be Member States shall the measures
pirated, adopt

where counterfeit or are not
compensation pirated goods

to allow the authorities :
necessary competent

detected a customs office and their release is not
by
therefore suspended or no measure is taken interrupting
as a rule and in accordance with the
(a general, the transit as for Article SCI
operation provided ").
relevant of national law to
provisions, destroy goods
found to be counterfeit or or of
pirated, dispose
them outside the channels of commerce in such a
way as to preclude injury to the owner or holder of

be Member States shall the measures
pirated, adopt

to allow the authorities :
necessary competent

the without of sort
right, compensation any ;

b to take in of such other measures
( ), respect goods, any

having the effect of effectively depriving those
for or transit of
responsible importation, exportation

the economic benefits of the transaction .

2 . Save as otherwise provided by the law of the
Member State concerned exercise a customs office or
, by
by another duly empowered authority of the powers
conferred on them in to counterfeit or
regard combating
pirated goods shall not render them liable to the
importer or exporter or any other person holding rights
with to the entered for free circulation or
respect goods

for or carried under a transit in the
export procedure,
event of his suffering loss or damage as a result of their

The inter alia shall not be as event
following,, regarded
action .

such effect :
having

—
the counterfeit or in
re-exporting pirated goods

the unaltered state
,

—
other than in cases
exceptional, simply removing

the trademarks which have been affixed to the

counterfeit without authorization
goods,

—
the for a different customs
entering goods

.
procedure

Moreover each Member State shall to
, impose penalties
discourage further transactions of the same kind . Such
##### must be effective commentate with their
penalties,

and have deterrent effect .
purpose adequate

3 . The civil liability of the owner or holder of a right
shall be governed by the law of the Member State in

­
which the goods in question were entered for free circu

lation or for or seized a transit .
export during procedure

Article 9

This Regulation shall not apply to goods of a
non-commercial nature contained in travellers ' personal
within the limits laid down in of relief
luggage respect
from customs .
duty

No C 238 / 14 Official Journal of the European Communities 2 . 9 . 93

Article 10

The provisions required for applying this Regulation

shall be adopted in accordance with the procedure laid
down in Article 11 .

Article 11

1 . The Commission shall be assisted by the committee
## set Article 247 of EEC No 2913 / 92 .
up by Regulation ( )

2 . The representative of the Commission shall submit
to the committee a draft of the measures to be taken .
The committee shall deliver its opinion on the draft
within a time limit which the chairman down
may lay

to the of the matter if
according urgency, necessary by
a vote .
taking

The shall be recorded in the minutes in
ppinion ;
addition each Member State shall have the to ask
, right
to have its recorded in the minutes .
position

The Commission shall take the utmost account of the

opinion delivered by the committee . It shall inform the
committee of the manner in which its opinion has been
taken into account .

3 . The Committee examine matter
may any
the of release for free circulation
concerning prohibition,
or transit of counterfeit or raised
export pirated goods
the chairman on his own initiative or at the
by, request
of a Member State .

Article 12

­
Member States shall communicate all relevant infor
mation on the application of this Regulation to the

Commission .

The Commission shall communicate this information to

the other Member States .

The details of the information procedure shall be drawn

in the framework of the in
up implementing provisions

accordance with Article 11 ( 2 ) and ( 3 ).

Article 13

Within two the into force of this
years following entry

the Commission shall on the basis of the
Regulation,,
information referred to in Article 12 to the
, report
European Parliament and the Council on the operation
of the instituted thereunder and shall
system propose
such amendments and additions as need to be made

thereto . An initial evaluation shall be carried out at the

end of the first .
year

A rticle 1 4

#### Council Regulation ( EEC ) No 3842 / 86 of 1 December

1986 is .
repealed

Article 15

This shall enter into force on 1 1994 .
Regulation July

This Regulation shall be binding in its entirety and

directly applicable in all Member States .