Source: EURLEX
Language: en
Format: md

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COMMISSION OF THE EUROPEAN COMMUNITIES

Brussels, 28.01.1998
COM(1998) 25 final

98/0018 (ACC)

**REPORT FROM THE COMMISSION**

**on the implementation of Council Regulation (EC) No 3295/94 of** **22** **December 1994 as**
**regards border controls on trade in goods which may be counterfeit or pirated**

**Proposal for a**
**COUNCIL REGULATION (EC)**

**amending Regulation (EC) No 3295/94 laying down measures to prohibit**

**the release for free circulation, export, re-export or entry for a**

**suspensive procedure of counterfeit and pirated goods**

(presented by the Commission)

SUMMARY

On 22 December 1994 the Council adopted Regulation (EC) No 3295/94 concerning the role of
customs in combating counterfeit and pirated goods. This document puts into effect the
provisions of the TRIPS Agreement with regard to intellectual property rights. This Agreement
was one of the results of the Uruguay Round and represents one of the most important
international treaties in the field.

**Operation of the system**

The main purpose of the Regulation is to allow the customs authorities to suspend customs
operations in cases where the goods concerned are suspected of being counterfeit or pirated
goods covered by an intellectual property right (brand or trade mark, design right, copyright or
neighbouring right) in respect of which the right holder has requested "customs protection".

During the period of suspension, the right holder may petition the competent national authorities
(normally the judiciary) to take action on the matter. If there is no referral to the courts, the
goods are released.

The system set up by the Regulation has produced some very good results in the field. In the
two-year period July 1995-June 1997 customs took action in 4 133 cases as compared to fewer
than 2 000 during the seven and a half years (1 January 1988 to 30 June 1995) of application of
the previous Regulation.

Operations were carried out on freight, passenger and postal traffic but the most significant
cases, in terms of counterfeit goods seized, involved freight. These mainly concerned counterfeit
trade marks but a growing number of cases has involved goods which infringed copyright,
neighbouring rights or design rights. Although checks were carried out mainly on imports
(release for free circulation), they have gradually increased in relation to export, re-export and
transit operations to the point that they are now producing some very encouraging results in
those fields too.

**The improvements proposed by the Commission**

Since the results have proved satisfactory, the Commission now proposes to extend the scope of
the Regulation and modify it to reflect the development of Community legislation on intellectual
property rights. The improvements envisaged by the Commission have already been favourably
received by the main trade associations concerned at a meeting in Brussels on 23 July of this

year.

The Commission would therefore like to introduce amendments in relation to the following
aspects:

 - extension of the scope of the Regulation to cover a new intellectual property right,
i.e. some patents;

 - extension of the customs authorities' scope for action to cover free zones and free
warehouses and all suspect goods from the moment that they come under
customs supervision;

**updating (simplifying) the Regulation to take** **account** **of the Community trade mark**
**(fully operational since** **1** **April of 1996) through the introduction, for the benefit of holders**
**of** **such** **marks, of** **a** **single system for applying for "customs protection" which is valid in a**
**number of Member States.**

**TABLE OF CONTENTS**

**1.** **The content of Regulation (EC) No 3295/94**

**2.** **The implementation of Regulation (EC) No 3295/94**

**3.** **Statistics on the operation of the system**

**4.** **Trade flows detected under Regulation (EC) No 3295/94**

**5.** **The economic and social impact of counterfeiting**

**6.** **Amendments and additions proposed by the Commission**

_**(a)**_ _**Extending the scope of the Regulation to patented inventions**_

_**(b)**_ _**Extending the scope of the Regulation to all customs statuses**_

_**(c)**_ _**Updating the Regulation to take account of the Community trade mark**_

**7.** **The demands of the trade associations concerned**

_**(a)**_ _**Non-commercial imports in travellers**_ _**'**_ _**baggage**_

_**(b)**_ _**Excluding parallel imports from the scope of the Regulation**_

_**(c)**_ _**Fees and guarantees**_

_**(d)**_ _**The cost of destroying counterfeit or pirated goods**_

_**(e)**_ _**Access to samples**_

_**if)**_ _**Penalties**_

**8.** **Conclusion**

Council Regulation (EC) No 3295/94 of 22 December 1994 laying down measures to prohibit
the release for free circulation, export, re-export or entry for a suspensive procedure of
counterfeit and pirated goods has applied since 1 July 1995 [1] .

Article 15 of the Regulation requires the Commission to report regularly to the
European Parliament and the Commission on the operation of the system, and in particular the
economic and social consequences of counterfeiting, and to propose, within two years of the
Regulation's implementation, any amendments or additions required. This communication
accompanies the report drawn up by the Commission on this subject.

It takes stock of the first two years of application and contains a list of measures likely not only
to strengthen the part played by the Regulation in countering counterfeiting and pirating but to
streamline the administrative procedures necessary for its implementation, thereby benefiting
holders of certain intellectual property rights.

**1.** The **content of Regulation (EC) No 3295/94**

1.1. Council Regulation (EC) No 3295/94 of 22 December 1994 laying down measures
to prohibit the release for free circulation, export, re-export or entry for a suspensive
procedure of counterfeit and pirated goods is intended to protect the Community's
external frontier and applies solely to trade with third countries. It complements
national machinery for the protection of intellectual property rights.

1.2. It repealed and replaced Council Regulation (EEC) No 3842/86 of 1 December 1986
laying down measures to prohibit the release for free circulation of counterfeit
goods [2] in order to:

***** extend the protection afforded by customs to other intellectual property rights
and customs procedures;

       - enhance the effectiveness of the system of customs protection provided for in
that Regulation;

       - take account of the Agreement establishing the World Trade Organization
signed in Marrakesh on 15 April 1994, the annexes to which include the
Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS), one of the most important international treaties on intellectual
property [3] . Part III of the TRIPS Agreement is entitled "Enforcement of
intellectual property rights" and contains a section on special requirements
related to border measures (Articles 51 to 60 of the Agreement): Regulation
No 3295/94 is in conformity with this section.

1 OJL341, 30.12.1994, p. 8.
2 OJ L 357, 18.12.1986, p. 1.
3 Annex lC;OJL 336, 23.12.1994, p. 213.

1.3. The Regulation entitles the holders of certain intellectual property rights
(trade marks or brands, copyright and related rights and designs), persons authorized
to exercise such rights and their representatives to apply to customs to detain or
suspend the release of suspected counterfeit or pirated goods for a fixed period
(normally ten days) to give the applicant time to petition the competent authorities
(normally the judiciary) for a substantive decision on whether the intellectual
property rights in question have indeed been infringed. In Germany, where the
customs authorities themselves are competent to take substantive decisions, recourse
to the judiciary is necessary only in cases where the importer has first appealed
against the detention measure.

1.4. Customs may also act on their own initiative, i.e. without a prior application, where
goods are suspected to be counterfeit or pirated. In this case, the period for which
release may be suspended or goods detained is shorter (three days), simply
permitting the right holder concerned to apply for customs protection.

1.5. The Regulation has the following structure:

Chapter I sets out the scope of the Regulation and the definitions necessary
for its implementation.

Chapter II expressly prohibits the release for free circulation (i.e. the import),
export, re-export or entry for a suspensive procedure of counterfeit and
pirated goods found to be counterfeit or pirated in the wake of action by
customs under the Regulation.

Chapter III covers the triggering of the mechanism either in response to
an application from the holder of a right or on the customs authorities'
own initiative.

Chapter IV lays down the conditions governing action by the customs
authorities and the authority competent to take a substantive decision.

Chapter V stipulates what is to be done with goods found to be counterfeit
or pirated.

Chapter VI (Final provisions) covers such aspects as liability, excludes from
the scope of the Regulation goods of a non-commercial nature contained in
travellers' personal luggage within the limits laid down in respect of relief from
customs duty (ECU 175) and binds the Member States to impose penalties in
the event of breaches of the Regulation. It likewise obliges the Member States
to communicate to the Commission all relevant information on the

implementation of the Regulation and requires the Commission, within
two years of the Regulation's implementation, to report to Parliament and the
Council on the operation of the system and propose any amendments or
additions required. Such is the purpose of this report.

**2.** **The implementation** of **Regulation (EC) No 3295/94**

2.1. The Commission has adopted implementing measures under Commission Regulation
(EC) No 1367/95 of 16 June 1995 [4] .

2.2. Though directly applicable, the Regulation also called for the adoption of a number
of measures at national level, including the appointment of a national authority
competent to handle holders' applications for protection or the adoption of penalties.
The Member States were given six months from the publication of the Regulation to
its entry into application.

2.3. It should be noted that, although the Regulation is addressed directly to the national
customs authorities, particularly as they are the only authorities competent to deal
with applications within the meaning of the Regulation, collaboration and
cooperation with other national administrative departments has not been ruled out in
practice.

2.4. By 1 July 1995 most Member States had adopted the national measures needed for
the implementation of the new rules. In Belgium, however, though an authority
competent to handle right holders' applications for protection was appointed early
on, a Royal Decree laying down the national measures necessary for the
implementation of the Regulation did not come into force until 14 December 1996.
Though this delay was something of an inconvenience to right holders, the
Belgian authorities nevertheless performed checks and obtained some significant
results during the period in question.

2.5. There are still problems with the implementation of the Regulation by some
Member States.

Belgium (legislation in preparation) and Greece, for example, have still to comply
with the obligation to adopt effective, proportionate and deterrent penalties to
protect designs.

Furthermore, while the Regulation does not preclude a Member State from
appointing several authorities **to** handle applications for protection, an application is
supposed to cover the entirety of the national territory (single application). This is
not currently the case in Greece where ten competent authorities have been
appointed, each of them dealing with a given region. Contrary to the provisions of
the Regulation, a right holder has to complete ten applications to obtain customs
protection throughout Greek territory.

**3.** **Statistics on the** **opération** **of the system**

3.1. The system introduced by the Council provides for the monitoring of its application
in the Member States.

3.2. Data for the two-year period 1 July 1995-30 June 1997 show that the
Member States suspended release or detained goods in 4 133 cases.

OJ L 133, 17.6.1995, p. 2.

3.3. This figure shows that the system introduced by the Regulation is not only
operational but working well. Customs have intervened far more often in the two
years since Regulation (EC) No 3295/94 has applied than in the entire seven and a
**half** years of Regulation (EC) No 3842/86 ( 1 842 cases in total).

3.4. **The** 4133 cases of action under the new Regulation can be broken down as follows:

**Germany:** 1 844
**France:** 527

**United Kingdom:** 487
**Spain:** 459
**Netherlands:** 390

**Denmark:** 139
**Belgium:** 127
**Italy:** 71
**Finland:** 63

Luxembourg: 18
Sweden: 5

Ireland: 3

3.5. The Commission has received no statistics concerning the other Member States.
Austria says that it has so far received only three applications and that no action had
been taken prior to 30 June 1997. Portugal says that it has taken no action as it has
received only one application for protection. However, the Commission has been
unable to obtain any information concerning Greece, where no action would appear
to have been taken during the period in question. Whatever the case may be, the
application system set up by Greece (described in 2.5) would appear to have
deterred holders.

3.6. A more detailed analysis of the reports submitted by the Member States can be found
in Annex 2.

4. **Trade flows detected under Regulation** (EC) **No 3295/94**

4.1. As the statistics communicated by the Member States bear out, the system is
working well and producing encouraging, even highly satisfactory, results. It
is therefore worth looking at these figures in terms of the types of
movements concerned.

4.2. It should be noted, however, that the rules governing the single market mean that
this customs act applies only to goods moving between third countries and the
Community. The Regulation, by its very nature, precludes the detection of
counterfeit or pirated goods manufactured inside the Community or circulating
between Member States. Nevertheless, comparable provisions (controls carried out
by customs) exist in national law in some Member States.

Moreover, the Commission is continuing to follow closely questions concerning the
fight against counterfeiting and pirating within the Community. This action is of
prime importance in achieving the eradication of - or at least a substantial reduction
in - counterfeiting and pirating.

4.3. Not all Member States break down their statistics by freight, passenger and postal
traffic. Where this information is provided, however, it is very interesting. For
instance, of the 657 cases recorded by German customs in the first six months of
1997, 347 (52%) concerned travellers and only twelve goods sent by post. Of
527 cases reported by France, 265 (50%) involved travellers and 22 the post. In
Spain, 243 (53%) out of a total 459 cases involved travellers and two the post. Of
390 cases in the Netherlands, 161 (41%) concerned travellers and 129 the post. In
terms of the quantities seized, however, most searches of travellers' baggage
revealed fewer than ten articles. Thus, in terms of efficiency, checks on freight
operations obviously produce the best results, given that a single seizure may involve
thousands of articles of various kinds (see Annex 2 for noteworthy cases). Postal
checks too can sometimes yield very interesting results. The customs authorities in
the Netherlands, for example, were able to seize more than 3 000 pirate CDs
originating in Bosnia-Herzegovina as the result of an operation involving a
consignment sent by post.

4.4. Most of the products seized are consumer goods (clothing and watches in the main).
While articles bearing a prestigious label, be they clothes, watches or leather goods [5],
remain prone to counterfeiting, there is increasing counterfeiting of "in" brands,
particularly in the field of sports (sportswear, sports shoes, caps with the logos of
leading football or basketball teams, a wide range of objects bearing brands
specializing in sports goods), articles for children (clothing and gadgets bearing
brands targeted at children) and computer products and video games
(microprocessors, CD-ROM's, consoles and games for them). The brands concerned
are mainly European or, in the case of sports goods, articles for children and
computer products, American.

4.5. In addition to spare parts for motor vehicles and toys, the diverse products
concerned include sunglasses, pens, garden gnomes, garden chairs, playing cards,
biscuits, switches and pans.

4.6. Regulation (EC) No 3295/94 also covers "parts" for counterfeit goods, i.e. trade
mark symbols (logos, labels, stickers, brochures, instructions for use or guarantee
documents) or packaging (even empty), enabling customs to deal with another form
of counterfeiting: unlabelled goods are imported into the Community in a number of
consignments while trade mark symbols such as labels or buttons are brought in with
a traveller's luggage, the counterfeit goods then being assembled in the Community.
The large quantities of labels, buttons and rivets detected, particularly in the
United Kingdom (see Annex 2), show the scale of the problem and how important it
is for customs to pay particular attention to trade mark symbols.

Note that very few cases involved perfumes or toilet waters.

4.7. The statistics provided by the Member States also show that the Regulation is used
mainly to seize goods at the point of release (70%» of cases), action at other stages of
the customs process being far less frequent, though not unknown. Furthermore,
some seizures in Finland in the course of export/re-export show the benefits of being
able to act at a stage other than release. In ten operations, Finnish customs
intercepted 130 576 shoes, 104 316 shirts, 32 400 video games, 15 487 pairs of jeans
and 13 650 coats, all of which were destined for Russia.

4.8. In most cases customs acted against goods bearing a counterfeit brand or trade mark
(over 90% of cases). This is not surprising, given that the implementation of
Regulation (EC) No 3842/86 provided customs with some experience of counterfeit
goods, which are also somewhat easier to detect than abuses of other forms of
intellectual property.

4.9. The results in respect of pirated goods are encouraging none the less. Customs are
increasingly active on this front. One intervention in ten now involves goods
protected by copyright. There is therefore every reason to believe that results will
continue to improve in spite of the fact that it is far harder for customs to detect
breaches of copyright or a related right than offences against a brand or trade mark,
which are far more visual.

4.10. Results on designs have been poorer, though not negligible (5.8% of interventions).
Apart from the fact that this is a new area for customs, it should be borne in mind
that, in most cases, goods seized by customs combine the counterfeiting of a brand
with the pirating of a design. In such cases, customs administrations usually prefer to
act on the basis of the counterfeiting, which is far easier to detect.

5. **The economic and social impact of counterfeiting**

5.1. Since Regulation (EC) No 3295/94 only concerns specific trade flows (import/export
deals with third countries), it is in no way a suitable tool for gauging the economic
and social impact of counterfeiting in the Community.

5.2. It is not easy to discern the scale of the counterfeiting and pirating phenomenon.
Numerous professional organizations at national, European or international level
regularly produce estimates of counterfeiting and pirating. These do give a better
idea of the phenomenon, but still only a small insight.

The adverse effects of counterfeiting and pirating on employment in the
Member States, on the collection of direct and indirect taxes and on product quality,
to the detriment of consumers, are incontestable. However, it is currently not
possible to put precise figures on these.

**6.** **Amendments and additions proposed by the Commission**

6.1. Apart from a few problems with implementation in a certain Member States (see 2),
the Commission has observed no particular difficulties regarding the application of
Regulation (EC) No 3295/94. The structural problems affecting the previous
Regulation (EEC) No 3842/86 were resolved in the drafting of Regulation (EC)
No 3295/94, the system is now operational and its effectiveness is hampered neither
by structural problems nor by divergent interpretations of its provisions.

**10**

6.2. The Commission therefore proposes to go further, extending the system to cover
another intellectual property right and goods with other customs statuses **and**
adjusting the Regulation to take account of the Community trade mark.

_**(a)**_ _**Extending the scope of the Regulation**_ _**to**_ _**patented inventions**_

6.3 Patents are a vital aspect of intellectual property and at the heart of the machinery
available for safeguarding innovation. They allow people to profit from their own
ideas and creativity. A patent protects an inventor from competitors seeking to profit
unfairly from his work. It legally guarantees a return on investment in research and
development. Protecting patents is therefore vital to the Community: safeguarding
innovation enables European products to develop in the face of international
competition and so helps the European economy hold its own internationally.

6.4. The inclusion of patents was discussed during the drafting of Regulation (EC)
No 3295/94, but it was decided at that time to reconsider the matter later, notably in
the light of the results achieved in the matter of copyrights and designs.

6.5. In view of the statistics supplied by the Member States, it now seems worth a try.
Admittedly, it will not be easy for customs officers to spot goods breaching a patent
inasmuch as the offence is not immediately visible to the naked eye and may require
officials to examine complex scientific documentation. These difficulties must not,
however, be allowed to stand in the way of the experiment, especially one
**that** reflects frequent requests from the trade associations concerned.
Moreover, while the TRIPS Agreement does not bind contracting parties to apply
the "border measures" in Articles 51 to 61 to goods in breach of patents, it does
make provision for them to do so.

Nevertheless it seems appropriate to limit the extension of the scope of the
Regulation to patents on products, excluding those on processes. The latter do not
lend themselves easily to a system of frontier-based measures. Of course there is
nothing to prevent the holder of a patent on a process from going to the national
courts when he considers that his patent has been improperly used and benefiting in
**this** content from the "reversal of the burden of proof.

On the other hand, supplementary protection certificates (SPCs) for medicinal and
**plant** protection products should be included. In these cases, customs' action - and
the information the holder must provide - is virtually the same as for a patent on a
product. Furthermore, in the case of SPCs, counterfeiting these products puts basic
interests such as human or animal health at stake.

_**(b)**_ _**Extending the scope of the Regulation to all customs statuses**_

6.6. Endorsing the request from both the Member States, and in particular Belgium and
France, and certain trade associations, the Commission believes that the Regulation
should cover all counterfeit or pirated goods, whatever their customs status.
Customs would then be able to intervene in cases other than release for free

circulation, export, re-export or entry for a suspensive procedure.

**11**

6.7. In practice, this extension would cover the following specific scenarios: goods in a
free zone or warehouse and goods under customs supervision, including those in
temporary storage, i.e. goods that have been brought into the Community customs
territory and placed in temporary storage areas or facilities pending assignment to a
customs-approved treatment or use (release for free circulation, export etc.) [6] .

6.8. Even if the Regulation, in its current form, permits such goods to be intercepted
when their status changes, customs nevertheless need to be able to act when or while
goods are being stored. Customs officials often discover goods likely to be
counterfeit or pirated and find themselves having to wait until the goods either leave
the free zone or warehouse or cease to be in temporary storage (through assignment
to a customs-approved treatment or use). Yet the goods in question might very well
be spirited away in the meantime, especially if the culprit has reason to believe that
customs harbour suspicions about the goods.

_**(c)**_ _**Updating the Regulation to take account of the Community trade mark**_

6.9. Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade
mark [7] provides for the establishment of Community arrangements for trade marks
whereby undertakings can by means of one procedural system obtain Community
trade marks to which uniform protection is given and which produce their effects
throughout the entire area of the Community. The Community trade mark has been
fully operational since 1 April 1996.

6.10 The Community trade mark is governed by a single Community regulation, which is
directly applicable in all Member States. It constitutes a single right conferring
uniform protection throughout the Community. It does not, however, replace
Member States' trade marks.

6.11 In order to let the Community trade mark flourish, the Commission intends to
simplify the administrative side of protecting the Community trade mark under
Regulation (EC) No 3295/94 by allowing a single application for customs protection
to be lodged instead of the fifteen currently required to cover the whole of the
Community's territory.

6.12 Though retaining the option of using the current system and lodging a series of
applications, the holder of a Community trade mark could alternatively apply for
action in a Member State of his choice and specify the other Member States in which
action is sought.

6.13 The application would be handled by the competent authority of the Member State
concerned. Acceptance (or rejection) would be valid for all the Member States
specified; it would be for the competent authority of the Member State in which the
application has been lodged to notify the relevant authorities of the other
Member States concerned of the decision taken.

Goods may spend 45 days in temporary storage if they arrive by sea and 20 days in all other cases.
OJL 11, 14.1.1994, p. 1.

**12**

6.14 However, in the absence of a unified Community customs administration, any fees
and guarantees required in the individual Member States concerned by an application
would continue to be dealt with nationally.

6.15 A uniform period of protection would have to be introduced for Community
trademarks together with standard forms for applying for the protection of a
Community trade mark and for the processing of such applications by the
Member States.

6.16 The advantage of this system is that it slots easily into the current one since it
requires the setting-up neither of a central authority nor of a unified guarantee
system, which would pose insurmountable legal and practical problems. It would
also serve as an example and a precedent once a Community design [8] has
been created.

7. **The demands of the trade associations concerned**

7.1. The Commission has had several meetings with trade associations working in
the field of intellectual property and right holders to discuss the implementation
and operation of the Regulation. Their comments have also been relayed by
the Member States' delegates to the Customs Code Committee-Counterfeit
Goods Section.

7.2. For the purposes of drafting this report the Commission met the main trade
associations concerned on 23 July 1997 to give them an opportunity to make known
their views and wishes.

7.3. At this meeting the Commission's representatives outlined the three ways in which
they believed the Regulation could be amended (see 6). Apart from the objections of
one association present at the meeting to extending the scope of the Regulation to
encompass patents, these proposals were very well received since they reflected
demands that the associations had made or wished to make.

7.4. Various other issues were touched on, with the Commission adopting the
following positions:

_**(a)**_ _**Non-commercial**_ _**imports in**_ _**travellers'**_ _**baggage**_

7.5. Business circles concerned have long been arguing for the abolition of the
exclusion in Article 10 of Regulation (EC) No 3295/94. This clause excludes from
the scope of the Regulation goods of a non-commercial nature contained in
travellers' personal baggage within the limits of the duty-free allowance (ECU 175).
This "tolerance" is held to foster small-scale trafficking and send inappropriate
signals to travellers and tourists.

7.6. While acknowledging the existence of small-scale trafficking, the Commission feels it
does not alter the principle that intellectual property rights are limited to commercial
transactions, a position which is, moreover, consistent with Article 60 of the
TRIPS Agreement. Furthermore, the relatively flexible concept of "goods of a

**OJC** **29, 31.1.1994, p. 20.**

**13**

non-commercial nature" affords customs scope for handling a wide range of
situations. The considerable number of seizures from travellers shown in the statistics

provided by the Member States (see 4 above and Annex 2) should reassure business
**circles that** customs' hands are not tied in this respect.

7.7. **The** Commission therefore believes that Article 10 should be retained in its

**present** wording.

7.8. In order to stay the fears of business circles, the Member States should adopt
**measures** to publicise the rules in force more widely and raise the awareness of
**travellers,** particularly tourists.

_**(b)**_ _**Excluding parallel imports from the scope of the Regulation**_

7.9. Business circles have long been calling for the extension of the Regulation to cover
**parallel** imports, i.e. goods manufactured with the right holder's consent but
imported without his consent.

7.10. The Commission has always opposed this demand. In the case of parallel imports,
the goods cannot strictly speaking be termed counterfeit, given that, within the law
of the exporting country, the goods have used an intellectual property right.
Furthermore, the holder of an intellectual property right in the Community merely
has the option of opposing their importation into the Community, not an obligation.
Moreover, in this case the task of customs officials would be extremely difficult,
since the goods are physically identical to approved imports. The Commission
therefore believes that the Regulation should not be amended in this respect.

_(c)_ _**Fees and guarantees**_

7.11. The Regulation permits Member States to collect a fee for customs protection to
cover the administrative costs incurred through handling the application and seek a
guarantee to cover any liability for damage and/or storage costs.

7.12. In practice, the level of fees and guarantees differs greatly from one Member State to
another. Some business circles would like to see these sums harmonized. The

Commission sees no need for this. The fact that these sums differ from one

Member State to another in no way affects the operation of the system provided for
in the Regulation. Were a Member State to set these amounts at a level deterring
applications for customs protection, the Commission would obviously have to step in
and deal with the Member State concerned.

_**(d)**_ _**The**_ _cost of destroying counterfeit or pirated goods_

7.13. Who bears the cost of destroying counterfeit or pirated goods varies from one
Member State to another. Depending on the Member State concerned, the costs are
borne by the perpetrator of the offence, the owner of the goods, the right holder or
the State itself. In most cases, however, it is for the judge who rules that goods are
counterfeit or pirated to determine the person or authority liable for the cost of
destroying them. Business circles are calling for the Regulation to resolve this point
by specifying who is to cover the costs in question.

**14**

7.14. The Commission believes that a degree of flexibility should be allowed here so
. **that each** Member State can adopt the solution that suits it the best as, in any
event, goods found to be counterfeit or pirated must be removed from
**commercial** channels.

_**(e)**_ _**Access to samples**_

7.15. While goods are detained or their release suspended, customs may take samples for
the purposes of the procedure.

7.16. Several organizations representing right holders have asked for the Regulation to be
amended to allow customs to send them some of the samples directly to help them
draw up their own reports.

7.17. The Commission believes that the Member States should be allowed some room for
manoeuvre here and that it is up to them, under their own national legislation, to
assess the best means, in view of time and cost constraints in particular, of allowing
right holders to inspect goods that have been detained or whose release has been
suspended. The Commission therefore considers that there are no grounds to amend
the Regulation in this respect.

_**(f)**_ _**Penalties**_

7.18. The Regulation requires the Member States to impose penalties where goods which
have been detained or whose release has been suspended prove to be counterfeit or
pirated. Under Article 5 of the EC Treaty and the case law of the Court of Justice,
these penalties must be effective, proportionate and deterrent.

7.19. Some in the trade have called for the Regulation to include guidelines for deciding
between administrative and criminal penalties, for a degree of harmonization
concerning the type of criminal penalties applied (imprisonment, fines, etc.) and for
**all** Member States to make counterfeiting and pirating a specific customs offence.

7.20. As regards the calls concerning criminal penalties as such, Article 113 of the
EC Treaty, the legal basis of the Regulation, is not an appropriate legal basis

7.21. As for administrative penalties, the Commission feels that they would not be useful in
this case because they are not an alternative to criminal penalties, if only because
Article 61 of the TRIPS Agreement requires contracting parties to introduce
criminal penalties.

**S.** **Conclusion**

8.1. While the initial statistics are very encouraging and the improvements to the system
set up under the previous Regulation (EEC) No 3842/86 mean that the system set up
by Regulation (EC) No 3295/94 is operational, the system should nevertheless be
updated to take account of developments in Community rules on intellectual
property rights (the establishment of a Community trade mark) and customs given
greater scope for action (extending the scope of the Regulation to protect patents
and cover counterfeit or pirated goods whatever their customs status).

**15**

8.2. Such amendments will help step up action against fraud at the Community's
external frontiers, ensure the effective and uniform application of Community rules
and offer the Community's citizens and traders an equivalent level of protection
throughout the Community customs territory, without detriment to the throughflow
necessary for international trade. These objectives figure among those set out in
Decision No 210/97/EC of the European Parliament and of the Council of
19 December 1996 adopting an action programme for customs in the Community
(Customs 2000) [9] .

8.3. The Commission therefore proposes that Regulation (EC) No 3295/94 be amended
in the manner set out in Annex 1 to this report.

OJL 33, 4.2.1997, p. 24.

**16**

**ANNEX** **I**

#### **Proposal for a** **COUNCIL REGULATION (EC)** **amending Regulation (EC) No 3295/94 laying down measures to prohibit** **the release for free circulation, export, re-export or entry for a** **suspensive procedure of counterfeit and pirated goods**

**17**

EXPLANATORY MEMORANDUM

Point 1 (Title)

As the proposal involves extending the scope of the Regulation, its current title is no longer
correct and needs to be changed. More general wording should be used.

Point 2 (Article 1(1))

In order to improve the customs authorities' scope for action, they should be allowed to take
advantage of the provisions of the Regulation either when the goods are placed in a free zone or
warehouse or as soon as they are under customs supervision within the meaning of the
Community Customs Code, i.e. on entry into the Community. This will enable the customs
authorities to seize suspect goods, in accordance with the Regulation, when they are placed in
temporary storage areas or facilities pending assignment to a customs-approved treatment or
use (release for free circulation, export, etc.).

(ArtiçieJi2Xa))

In the light of the experience gained by the customs authorities in their efforts to stem the flow
of goods infringing copyright and related rights or design rights, the scope of the Regulation
should now be extended to the protection of patents on products and of supplementary
protection certificates for medicinal products and plant protection products. A new indent
therefore needs to be inserted in this paragraph so as to extend the definition of counterfeit
goods, for the purposes of this Regulation only, to include goods which infringe patents on
products or supplementary protection certificates.

(Article l(2)(c))

The aim of this amendment is to adapt the definition of the "holder of a right" to take account of
the extension of the scope of the Regulation to cover protection for patents on products and for
supplementary protection certificates for medicinal products and for plant protection products.

(Article l(2)(e))

One of the aims of the proposal is to establish a simplified procedure which can be used to apply
for action by holders of Community trade marks registered with the Office for Harmonisation in
the Internal Market (trade marks, design rights) in Alicante. The aim of this new point is to
define the "Community trade mark" by reference to the Regulation which introduced it.

(Article 1(2X0)

To facilitate reading of the text, it must be specified that the term "certificate" used in the
Regulation means supplementary protection certificates for medicinal products and for plant
protection products.

**18**

(Article 1(3))

This amendment takes account of the extension of the Regulation's scope to the protection of
patents on products and of supplementary protection certificates and indicates that moulds or
matrices intended for the manufacture of goods which infringe a patent on a product or a
supplementary protection certificate are also deemed to be counterfeit goods within the
meaning of the Regulation.

(Article 1(4))

This amendment takes account of the extension of the Regulation's scope to the protection of
patents on products and of supplementary protection certificates by specifying that the
exclusion from its scope of parallel imports in particular also applies to goods covered by a
patent on a product or by a supplementary protection certificate.

Point 3 (Article 2)

Goods found to be counterfeit or pirated cannot be marketed. Their entry into the Community,
release for free circulation, export, re-export or entry for a suspensive procedure is therefore
prohibited. In so far as the customs authorities are allowed to act when goods are placed in free
zones and free warehouses, the placing of goods found to be counterfeit or pirated in such
zones or warehouses should be prohibited.

Point 4 (Article 3(D)

Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark [10] fully operational since 1 April 1996 - has enabled natural and legal persons to obtain, by means
of a single procedural system, Community trade marks which enjoy uniform protection and
produce their effects throughout the entire area of the Community.

The conclusions in relation to the customs protection of such trade marks should now therefore
be drawn and a simplified procedure for applying for action introduced. Under such a system,
the holder of a Community trade mark should be able to make a single application for action,
lodged in one Member State and valid in one or more Member States.

(Article 3(3))

Since Community-wide coverage is not systematically required and as fees have to be paid in
some Member States, simplified applications for action (Community trade marks) need not
automatically cover all Member States; applicants should be free to choose the Member
State(s) in which protection is required. To facilitate applications relating to Community trade
marks, standard forms should be introduced based on a specimen form laid down in a
Commission implementing regulation.

**OJL** **11,** **14.1.1994,** **p.** **1.**

**19**

(Article 3(4))

The Member State in which the application for action is lodged may request the payment of a
fee to cover the administrative costs arising from the processing of the application. In the case
of a single application for action relating to Community trade marks, the Member States in
which the application would apply (other than the one in which it was lodged) would no longer
be able to charge fees despite incurring costs when putting the decision to take action into
effect. Provision should therefore be made for the States concerned to charge a fee to the
applicant or the applicant's representative so as to cover costs incurred in implementing a
decision approved in another Member State. The fees must not in any case be disproportionate
to the service provided.

(Article 3(5))

In the interests of simplification, decisions to take action relating to a Community trade mark
which apply in several Member States should take effect for the same period of time in each
Member State concerned. In order to take account of the variety of periods of validity
which normally apply in the Member States, a compromise would be a period of one year,
renewable once.

(Article 3(9))

To make the wording clearer, it should be specified that applications for extension should be
treated the same way as the original application for action.

Point 5 (Article 5)

To avoid the lodging and processing of a single application for action in more than one
Member State, the State in which the application was lodged should process it and then
forward its decision to the competent authorities of the other Member States in which customs
protection has been requested. Those States would then be bound by the original decision.
However, the States concerned may suspend implementation of the decision until any fees or
securities they require have been paid or lodged.

Point 6 (Article 7(2))

This amendment follows on logically from the extension of the scope of the Regulation to the
protection of patents on products and of supplementary protection certificates, by specifying
that, in certain circumstances, goods suspected of infringing a patent on a product or a
supplementary protection certificate may be released or their detention revoked against
provision of a security. It also specifies the terms for the release of such a security. These
provisions correspond to an obligation laid down in the Agreement on Trade-Related Aspects
of Intellectual Property Rights (TRIPS) [11] .

Annex 1 C; OJ L 336, 23.12.1994, p. 213.

**20**

Point 7 (Article 8(D)

This amendment follows on from the extension of the scope of the Regulation to the protection
of patents on products and of supplementary protection certificates. It extends the rules already
applicable to other counterfeit or pirated goods to goods infringing a patent on a product or a
supplementary protection certificate.

Point 8 (Article 9(1))

The rules relating to compensation for the right holder in cases where counterfeit or pirated
goods escape detection by a customs office, even though an application for customs protection
was made, are a matter for the jurisdiction of the Member State in which that application was
made. The aim of this amendment is to ensure that, in cases where applications for action relate
to a Community trade mark and therefore apply in several Member States, the Member State in
which the goods escaped detection by a customs office has jurisdiction in this respect.

(Article 9(2))

The laws relating to responsibility in the event of damage caused by the competent authorities in
the course of action by them pursuant to this Regulation fall within the jurisdiction of the
Member State in which the application was made. The aim of this amendment is to ensure that,
in cases where applications for action relate to a Community trade mark and therefore apply in
several **Member States,** the Member State in which the damage was caused has jurisdiction in
**this respect.**

**21**

**Proposal for a**
**COUNCIL REGULATION (EC)**

**amending Regulation (EC) No 3295/94 laying down measures to prohibit**

**the release for free circulation, export, re-export or entry for a**

**suspensive procedure of counterfeit and pirated goods**

**THE COUNCIL OF THE EUROPEAN UNION,**

Having regard to the Treaty establishing the European Community, and in particular
Article 113 thereof,

Having regard to the proposal from the Commission [12],

Having regard to the opinion of the European Parliament [13],

Having regard to the opinion of the Economic and Social Committee [14],

Whereas, pursuant to Article 15 of Council Regulation (EC) No 3295/94 [15], conclusions should
be drawn from the experience gained during the early years of its implementation with a view
to improving the operation of the system it set up;

Whereas the marketing of counterfeit goods infringing patents on products or, where they
concern patents on products, supplementary protection certificates for medicinal products as
provided for in Council Regulation (EEC) No 1768/92 of 18 June 1992 concerning the
creation of a supplementary protection certificate for medicinal products [16], as amended by the
Act of Accession of Austria, Finland and Sweden, or supplementary protection certificates
for plant protection products, as provided for in Regulation (EC) No 1610/96 of the
European Parliament and of the Council of 23 July 1996 concerning the creation of a
supplementary protection certificate for plant protection products [17] causes serious injury to
their holders and constitutes an unfair and unlawful business activity; 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 objective is also being pursued through efforts being made
along the same lines at international level;

Whereas, in order to guarantee the integrity of the Community's external frontier, the customs
authorities should be permitted to take action against counterfeit, pirated and associated goods
whatever their customs status; whereas the release for free circulation in the Community, entry
for a suspensive procedure, re-export or placing in a free zone or free warehouse of such goods
should therefore be prohibited; whereas moreover the customs authorities should be authorized
to take action as soon as the said goods are brought into the Community;

12 OJ
13 OJ

**14** OJ
15 OJL 341, 30.12.1994, p. 8.
16 OJL 182, 2.7.1992, p. 1.
17 OJL 198, 8.8.1996, p. 30.

**22**

Whereas, as regards suspensive procedures, free zones and free warehouses, re-export subject
to notification and temporary storage, the customs authorities will act only where goods
suspected to be counterfeit or pirated are discovered during a check;

Whereas Council Regulation (EC) No 40/94 of 20 December 1993 on the Community
trade mark [18], as amended by Regulation (EC) No 3288/94 [19], has established a system whereby
right holders can, by means of a single procedure, obtain Community trade marks enjoying
uniform protection and producing their effects throughout the Community;

Whereas to enhance the Community dimension of the said trade mark the administrative
procedure for obtaining customs protection should be simplified;

Whereas trade mark holders should have access to a system whereby the granting of a single
application for action by the competent authority in one Member State can bind one or more
other Member States as well;

Whereas a single period of validity should be set in the interests of the uniform application of
such decisions in the Member States concerned,

HAS ADOPTED THIS REGULATION:

**Article 1**

Regulation (EC) No 3295/94 is hereby amended as follows:

1. The title is replaced by the following:

"Council Regulation (EC) No 3295/94 of 22 December 1994 laying down measures
concerning the entry into the Community and the export and re-export from the
Community of goods infringing certain intellectual property rights".

2. Article 1 is amended as follows:

(a) The second indent of paragraph 1(a) is replaced by the following:

"- found in the course of checks on goods under customs supervision within the
meaning of Article 37 of Council Regulation (EEC) No 2913/92 of
12 October 1992 establishing the Community Customs Code placed under a
suspensive procedure within the meaning of Article 84(1 )(a) of that
Regulation, re-exported subject to notification or placed in a free zone or free
warehouse within the meaning of Article 166 thereof;

OJL 302, 19.10.1992, p. 1."

18 OJL 11, 14.1.1994, p. 1.
19 OJL 349, 31.12.1994, p. 83.

**23**

(b) Paragraph 2 is amended as follows:

(i) a fourth indent is added to point (a) as follows:

"- goods infringing, in the Member State in which the application for
action by the customs authorities is made, a patent on a product
under the law of that Member State or a supplementary protection
certificate as provided for by Council Regulation (EEC) No 1768/92
or Council Regulation (EC) No 1610/96** ;

OJL 182, 2.7.1992, p. 1.

OJL 198, 8.8.1996,p. 30."

(ii) Point (c) is replaced by the following:

"(c) "holder of a right": means the holder of a trade mark, a patent on a
product or a certificate, as referred to in (a), and/or one of the rights
referred to in (b), or any other person authorized to use that trade mark,
patent on a product, certificate and/or right, or a representative thereof.

(iii) The following points (e) and (f) are added:

"(e) "Community trade mark" means the trade mark defined in Article 1 of
Regulation (EC) No 40/94****.

(f) "certificate" means the supplementary protection certificate provided
for by Regulation (EEC) No 1768/92 or by Regulation (EC) No
1610/96."

**n n**

OJL 11, 14.1.1994, p. 1."

(c) Paragraph 3 is replaced by the following:

"3. Any mould or matrix which is specifically designed or adapted for the
manufacture of a counterfeit trade mark or of goods bearing such a trade
mark, of goods infringing a patent on a product or a certificate or of pirated
goods shall be treated as 'counterfeit or pirated goods', as the case may be,
provided that the use of. such moulds or matrices infringes the rights of the
holder of the right in question under Community law or the law of the
Member State in which the application for action by the customs authorities
is made."

(d) The first subparagraph of paragraph 4 is replaced by the following:

"This Regulation shall not apply to goods which bear a trade mark with the consent
of the holder of that trade mark or which are protected by a patent on a product or a
certificate, copyright or related right or a design right and which have been
manufactured with the consent of the holder of the right but are placed in one of the
situations referred to in paragraph 1(a) without the latter's consent."

**24**

3. Article 2 is replaced by the following.

"Article 2

The entry into the Community, release for free circulation, export, re-export, placing
under a suspensive procedure or placing in a free zone or free warehouse of goods found
to be counterfeit or pirated on completion of the procedure provided for in Article 6 shall
be prohibited."

4. Article 3 is amended as follows:

(a) The following text is added as the second subparagraph of paragraph 1 :

"Where the applicant holds a Community trade mark, the application may seek
action not only by the customs authorities of the Member State in which
the application is lodged but by the customs authorities of one or more other
Member States as well."

(b) Paragraphs 3 and 4 are replaced by the following:

"3. Save where the second subparagraph of paragraph 1 is applied, the application
must specify the length of the period during which the customs authorities are
requested to take action.

Applications under the second subparagraph of paragraph 1 shall indicate the
Member State or States in which the customs authorities are requested to
take action.

4. The applicant may be charged a fee to cover the administrative costs incurred
in dealing with the application.

The applicant or his representative may also be charged a fee in each of the
Member States where the decision granting the application is effective to
cover the costs incurred in implementing the said decision.

Such fees shall not be disproportionate to the service provided."

(c) The following third subparagraph shall be inserted into paragraph 5:

"Where an application is submitted under the second subparagraph of paragraph 1
the said period shall be set at one year, but may be extended for a further year, at the
right holder's request, by the service which took the original decision".

(d) The following paragraph 9 is added:

"9. The provisions of paragraphs 1 to 8 shall apply _mutatis_ _mutandis_ to the
extension of the decision on the original application."

**25**

5. Article 5 is replaced by the following:

"Article 5

1. The decision granting the application by the holder of the right shall be forwarded
immediately to the customs offices of the Member State which are liable to be
concerned with the goods alleged in the application to be counterfeit or pirated.

2. Where an application is submitted under the second subparagraph of Article 3(1),
the first indent of Article 250 of Regulation (EEC) No 2913/92 shall apply
_mutatis mutandis_ to the decision granting the said application and the decisions
extending or repealing it.

The service which adopted those decisions shall forward certified copies thereof to
the relevant service of the customs authority in the Member State or States where
the applicant has requested that action be taken.

The Member State or States so notified shall immediately acknowledge receipt of
the decisions referred to in the first subparagraph.

The period referred to in the third subparagraph of Article 3(5) shall run from the
date on which the decision granting the application was adopted The
Member States to which the said decision is addressed may suspend implementation
until the fee referred to in the second subparagraph of Article 3(4) has been paid and
the security referred to in Article 3(6) has been provided."

6. Article 7(2) is replaced by the following:

"2 In the case of goods suspected of infringing patents on products, certificates or
design rights, the owner, the importer or the consignee of the goods shall be able to
have the goods in question released or their detention revoked against provision of a
security, provided that:

the customs service or office referred to in Article 6(1) has been informed,
within the time limit referred to in paragraph I, that the matter has been
referred to the authority competent to take a substantive decision referred to
in the aforesaid paragraph 1,

on expiry of the time limit, the authority empowered for this purpose has not
imposed interim measures, and

all the customs formalities have been completed.

The security must be sufficient to protect the interests of the holder of the right. Payment
of the security shall be without prejudice to the other remedies open to the holder of the
right. Where the matter has been referred to the authority competent to take a substantive
decision other than on the initiative of the holder of the patent on a product, certificate or
design right, the security shall be released if that person does not exercise his right to
institute legal proceedings within 20 working days of the date on which he is notified of
the suspension of release or detention. Where the second subparagraph of paragraph 1
applies, this period may be extended to a maximum of 30 working days."

**26**

7. The introductory wording of Article 8(1 ) is replaced by the following:

"Without prejudice to the other forms of legal recourse open to the right holder,
Member States shall adopt the measures necessary to allow the competent authorities:"

8. In Article 9, paragraphs 1 and 2 are replaced by the following.

"1. Save as provided by the law of the Member State in which an application in
accordance with Article 3(2) is lodged or, in the case of an application under the
second subparagraph of Article 3(1), in which counterfeit or pirated goods escape
detection by a customs office, the acceptance of an application shall not entitle the
holder of a right to compensation where such goods are not detected by a customs
office and are released or no action is taken to detain them in accordance with

Article 6(1).

2. Save as provided by the law of the Member State in which the application is made
or, in the case of an application under the second subparagraph of Article 3(1), in
which loss or damage is incurred, exercise by a customs office or by another duly
empowered authority of the powers conferred on them in regard to combating
counterfeit or pirated goods shall not render them liable to the persons involved in
the operations referred to in Article 1(1 )(a) or Article 4, in the event of their
suffering loss or damage as a result of their action."

Article 2

This Regulation shall enter into force on the twentieth day following that of its publication in the
_**OffwialJournal**_ _**of**_ _**the European**_ _**Communities.**_

This Regulation shall be binding in its entirety and directly applicable in all Member States.

Done at Brussels, For the Council
The President

**27**

**Number of** **cases** **since 1 July 1995**

**First half of**

**1997**

42

29

657 inc.

1 432 inc.

87 P and 569 T

**ANNEX II**

**TOTAL**

127

139 inc.

69 P and 9 T

**Latter half of**

**1996**

40

48 inc.

18 P and 4 T

541 inc.

20 P

219 inc.

OP and 127 T

105 inc.

0 P and 23 T

3

**18**

135 inc.

**40 P** and **61** **T**

16

108

1 239 inc.

78 Pand 215 T

**Member State** **Latter half of**
**1995**

Belgium

Denmark

Germany

Spain

France

Ireland

Italy

Luxembourg

The Netherlands

Finland

Sweden

United Kingdom

17

39 inc.

34 P and 0 T

214 inc.

11 P

12 inc.

2 P and 2 T

196 inc

7Pand 159 1

0

NC

65

177 487

12 P and 347 T

167 inc.

OP and 104 T

140 inc.

11 P and 60 T

0

27

138 inc.

63 P and 46 T

46 inc.

1 Pandl2T

1 844 inc.

77 P and 347 T

459 inc.

2 P and 243 T

527 inc.

22 P and 265 I

3

71

18

390 inc.

129 P and 161 T

63 inc.

1 Pand 12 T

TOTAL 548 inc.

54 Pand 161 T

NC = Not communicated

P = Postal consignments
T = Travellers' baggage

**First** **half** **of**

**1996**

28

23 inc.

17 P and 5 T

432 inc.

34 P

61 inc.

OP and 10 T

86 inc.

4 P and 23 T

21

117 inc.

26 P and 54 T

1

137

914 inc.

81 Pand 92 T

28

4 133 inc.

300 P and 1 037 T

Type of
goods

**Number** **of** **cases** **by** **type** **of** **goods concerned since** **1** **July** **1995**

BE DK DE ES FR IR IT LU NL FI SV UK Total

Clothing 51

Footwear

Watches 12

Audio

cassettes

Logos,
pendants,
badges,
emblems,
labels,
stickers

Bags

Motor 0

vehicle parts

```
24

0

6

2

10

0

```

```
2S

10

0

```

```
506

127

70

57

23

48

79

155

73

25

79

21

```

```
330 E 413

   20

```

```
1 215

 52

 79

 122

 13

 13

 18

 5

 47

 56

 34

 8

 15

```

```
305

20

99

13

 19

 9

 19

 0

 0

29

```

```
44

```

```
123

26

234

 9

 4

34

 3

 0

```

Sunglasses
Toys
Caps
Video games
Micro
processors

CDs

```
Video

cassettes

```

```
5

3

12

6

2

```

119

```
 2

 1

 0

15

 0

10

 1

```

```
16

```

```
195

49

12

11

 0

 6

 0

22

 2

12

22

```

**BRIEF OVERVIEW**

**1.** **4 133 cases were reported during the period in question** **(July 1995-June 1997)**

1 844 ^>

527^

487 <^>

459 O

390 =>

139^>

1270

**7 1 ***

63 O

18*

5 0

3 *

DE

FR

UK 
ES - =>

NL 
**DK** 
BE O

IT 
FI 
LU

SV

**IR**

**(44.6%)**
(12.7%)
(11.7%)
**(11.1%)**
(9.4%)
(3.3%)
(3%)
(1.7%)
(1.5%)

**Type of trafficking**

Of the 4 133 cases:
300  - postal consignments (7.2%)
1 037 - travellers' baggage (25%)

**Type of products**

Of the 4 133 cases:

2 413 ^ clothing (mainly T-shirts, shirts, jeans and sportswear) (58.3%)
506* watches (12.2%)
155* caps (3.7%)
127  - music cassettes (3%)
120* footwear (2.9%)

NB:

- 70 cases involved trade mark symbols (logos, labels, sticker, badges, etc.)
(an innovation of Regulation (EC) No 3295/94). Most involved considerable
quantities. For instance, seizures in the UK included:
20 400 "Lacoste" logos (7 May 1996)
24 500 "Versace" logos (6 December 1995)
60 000 "Nike", "Ralph Lauren" and "Yves Saint-Laurent" labels from
Pakistan ( 17 October 1996)

75 000 "Levi's" logos, buttons and rivets (5 October 1995)
75 000 "Ralph Lauren" and "Yves St-Laurent" labels from Turkey
(14 March 1997)

79 900 "Calvin Klein", "Timberland Ltd", "Kickers" and "Ellesse" labels from
Pakistan (15 January 1997).

 - 79 cases involved toys (mainly scale models, balls, cuddly toys etc.).

**30**

**4.** **Noteworthy cases**

**800 000** **[ M]** **Bic** **[M]** **pens (15 November 1996, Belgium)**
##### **483 000 "Clipper Flamagas" lighters from Hong Kong (27 May 1997, Spain)** **150 000 "Bic" pens from Hong Kong (12 February 1997, France)**

**144 000 "Christian** **Dior"** **shirts** **(September1996,** **Belgium)**
**More than 140 000 CDs have been seized in Luxembourg**

**135 000** **"Disney"** **badges from China (26** **March** **1997,** **France)**
##### **129 000 caps counterfeiting a number of sports firms (6 May 1996, Belgium)**

**100 000 "Christian** **Dior"** **shirts destined for Russia (12 November 1996,**
**Finland)**
##### **87 000 "Disney" scarves from Korea (22 July 1996, France)**

**60** **000 "Bugs Bunny" and "Tweety** **Pie"** **key-rings ("Warner Bros") from**
**China (26 September 1996, Germany)**
##### **65 000 teddy bears from China ( 1 October 1996, France)**

**60 000 "Armani" shirts destined for Russia (23 January** **1997,** **Finland)**
**58 000 "Nike", "Armani", "W. Bros", "Disney",** **"Adidas",** **"Boy London",**
**"Casio",** **"Levi's", "Guess", "Coca" and "Ralph Lauren" watches** **from**
**Hong Kong** **(21** **January** **1997,** **France)**

**55 000** **"Walt** **Disney" cotton ensembles from China (29 April** **1997,** **Spain)**
**50 000 litres of** **"Newman"** **toilet water from Algeria (24 June** **1996,** **France)**
**58 000 "Nokia", "Coca** **Cola",** **"Marlboro" and "Motorola" lighters from**
**China (final quarter of** **1996,** **Netherlands)**
**42 000 "Versace" women's shoes destined for Russia (2 February** **1997,**
**Finland)**
**41 000 "Armani" shirts destined for Russia (14 January 1997, Finland)**
##### **37 000 "Nintendo" video games from Japan (date not reported, Netherlands)** **34 000 "Tweety" key-rings from China (second quarter of 1997, Netherlands)**

**34 000 "Michael** **Jordan"** **sports shoes destined for Russia**
**(14 March 1997,** **Finland)**
**33** **000** **"Smurf ' garden gnomes** **from** **China destined for France**
**(11** **April 1997, Belgium)**
**33 000 "Reebok" sports shoes destined for Russia (3 January 1997, Finland)**
**33 000 pairs of** **"Calvin** **Klein"** **underwear from the USA (24 July 1996, Spain)**
**32 000 "Nintendo" video games destined for Russia**
**(21** **February** **1997,** **Finland)**
**30 000 pairs of** **"Dunlop"** **socks from Turkey (25 January** **1996,** **Germany)**
**28 000 footballs from Pakistan** **(10** **November** **1996,** **Germany)**
##### **27 000 CDs from Israel (first quarter of 1996, Italy)**

**25 000** **"Levi** **Strauss"** **and** **"Calvin** **Klein" jeans** **from** **China**
**(15 November** **1996, Italy)**
**24 000 CDs from the Czech Republic (22 April** **1997,-Luxembourg)**
##### **22 000 "Mattel" watches from Hong Kong (23 December 1996, France)** **22 000 "Walt Disney" rings from South Korea destined for Poland**

**(26 May 1997, Germany)** **v**
**21 000 pairs of** **"Levi's"** **(23 August 1996, Belgium)**
**21 000 "Happy** **Baron"** **pans** **(14** **containers) (July** **1996,** **Belgium)**
**21 000 "Nintendo" video games from Hong Kong (January** **1996,** **Belgium)**
**20 000 watches and** **10** **000 caps ("Nike", "Fila" et "Boy London") from the**

**USA (June 1996, Belgium)**
**20 000 T-shirts (various brands) from Thailand (June** **1996,** **Belgium)**

**31**

   - 20 000 "Lewis" and "Diesel" sweatshirts (6 November 1996, Belgium)
   - 19 000 "Walt Disney" balls from the Czech Republic on 13 February 1996 and
15 000 more on 24 September 1996 (Germany)

   - 19 000 "Peugeot" motor vehicle parts from Taiwan (29 March 1996, France)
   - 18 000 pairs of "Levi's" jeans (30 April 1996, Belgium)
   - 16 700 "Walt Disney" balls from Taiwan (21 May 1996, Spain)

   - 16 000 "Nintendo" video games (6 November 1996, Belgium)
   - 16 000 "FC Bayern" footballs from Pakistan (11 November 1996, Germany)

   - 15 000 pairs of "Calvin Klein" jeans and 3000 shirts destined for Russia
(24 January 1997, Finland)
   - 15 000 pairs of "Ray Ban" sunglasses from China (15 February 1996, France)

   - 15 000 pairs of "Ray Ban", "Sting" and "Police" sunglasses from China
(April 1996, Belgium)

   - 15 containers of pottery "Walt Disney" characters from China destined for
France (April-May 1997, Belgium)

   - 8 cases in Germany involved garden gnomes (175 items) (copyright or design
rights, depending on the case)

   - 3 cases in Germany involved 2 200 litres of vodka from Latvia.

**5.** **The customs procedures and intellectual property rights concerned**

**NB:**

Such figures are available only for Italy from 1 July 1995, Germany, France and
Ireland from 1 January 1996, Belgium from 1 January 1997 and Denmark, Spain
and Finland from 1 April 1997.

Of the 2 165 cases concerned:

1517* release for free circulation (70%)
383* unlawful import (17.6%)
190* re-export (8.7%)
64* placing under a suspensive procedure (2.9%)
6 * export (0.2%)
1 962 * trade marks (90.6%)
206    - copyright and related rights (9.5%)
126    - design rights (5.8%)

**32**

**6.** **Source of the counterfeit goods**

Of **the** 4 133 cases:

17.9%)
17.5%)
12%)
10.5%)
5.8%)
4.7%)

3.6%)
2.3%)

1.2%)
1.1%)

`740` *****

`724` *****

`497` *****

`438` *****

`243` *****

195 
151 
98 
53  
46 

NB:

Poland 
Thailand 
Turkey USA 
Hong Kong China 
Czech Republic South Korea 
Indonesia 
Taiwan 

In Germany most cases involved products arriving from Poland, Turkey and
the Czech Republic.

In Spain most cases involved products arriving from the United States.

**33**

#### ISSN 0254-1475

## COM(98) 25 final

# **DOCUMENTS**

### EN 02 10 11 Catalogue number : CB-CO-98-028-EN-C ISBN 92-78-30270-8

Office for Official Publications of the European Communities

L-2985 Luxembourg

**34**