CELEX: 51984PC0705
Language: en
Date: 1984-12-14
Title: PROPOSAL FOR A COUNCIL REGULATION ( EEC ) LAYING DOWN MEASURES TO DISCOURAGE THE RELEASE FOR FREE CIRCULATION OF COUNTERFEIT GOODS

22.1.85                              Official Journal of the European Communities                             No C 20/7
                                                            II
                                                    (Preparatory Acts)
                                              COMMISSION
              Proposal for a Council Regulation laying down measures to discourage the release for
                                          free circulation of counterfeit goods
                                                   COM(84) 705 final
                           (Submitted by the Commission to the Council on 4 January 1985)
                                                      (85/C 20/04)
THE COUNCIL OF THE EUROPEAN                                     of the transaction and provides an effective deterrent
COMMUNITIES,                                                    against engaging in further transactions of the same
                                                                 kind;
Having regard to the Treaty establishing the
European Economic Community, and in particular                  Whereas the provisions of this Regulation do not
Articles 113 and 235 thereof,                                    apply to goods originating in the Member States or
                                                                which are already in free circulation within the
                                                                 meaning of Articles 9 and 10 (1) of the Treaty and
Having regard to the proposal from the Commission,
                                                                which are traded between Member States;
Having regard to the opinion of the             European        Whereas uniform application of the common rules
Parliament,                                                      laid down by this Regulation must be ensured and to
                                                                 that end a Community procedure must be provided
Having regard to the opinion of the Economic and                 enabling measures implementing these rules to be
Social Committee,                                                adopted within appropriate periods;
Whereas trade in counterfeit goods prejudices the                Whereas the provisions of this Regulation are
rights of law-abiding manufacturers and traders and              designed to discourage international trade in counter-
misleads consumers; whereas importation into the                 feit goods; whereas the specific provisions of the
Community of counterfeit goods from non-member                   Treaty do not confer on the Community institutions
countries should be discouraged and, to that end,                the power to adopt all the measures which are
measures should be adopted to combat such im-                    necessary to achieve this objective, in particular with
portation without impeding the freedom of legitimate             regard to the confiscation of counterfeit goods;
trade through the creation of non-tariff barriers;               whereas it is therefore necessary to base the
                                                                 provisions of this Regulation also on Article 235,
Whereas such measures must be of such a kind as to
strengthen the protection of trade mark owners;                  HAS ADOPTED THIS REGULATION:
whereas it is therefore necessary to lay down
common rules which determine the procedure to be                                         Article 1
followed when applying for action to be taken by the
customs authorities and the conditions governing the              1.   This Regulation lays down:
taking of such action by the customs authorities;
whereas it should be provided, in particular, that a              (a) the conditions under which the customs auth-
trade mark owner may lodge an application in writing                  orities shall suspend the release of goods from
for suspension of the release of counterfeit goods                    non-member countries entered for free circulation
 entered for free circulation where he has valid                      where they are suspected of being counterfeit,
 grounds for believing that such goods infringing his                 and
 rights are to be imported;                                       (b) the measures which shall be taken by the
                                                                      competent authorities with regard to these goods
Whereas it should also be provided that, where it is                  where it has been established that they are indeed
 established that goods the release of which has been                 counterfeit.
 suspended are counterfeit, they shall be disposed of in
 a manner which deprives those responsible for the                2.    For the purpose of this Regulation, 'counterfeit
 importation of such goods of the economic benefits               goods' means any goods bearing without author-
 ---pagebreak---  No-C 20/8                           Official Journal of the European Communities                               22.1.85
ization a trade mark registered in accordance with              4.    Where examination of the application referred
Community law or the law of the Member State in                 to in paragraph 1 shows that it does not contain the
which the goods are entered for free circulation.               information necessary to enable the customs auth-
                                                                orities to take effective action or is not accompanied
                                                                by sufficient evidence for it to be considered, the
                                                                customs authorities or the Commission, according to
                         TITLE I                                the circumstances, shall refuse it and shall inform the
                                                                person who lodged the application of such refusal.
   Applications for action by the customs authorities
                         Article 2
                                                                                         Article 3
1.    In each Member State, the owner of a trade
                                                                1.    Applications found to be valid by the customs
mark, hereinafter called the trade mark owner, or his
                                                                authorities of a Member State shall be forwarded
representative, may lodge an application in writing
                                                                immediately to the customs offices of the Member
with the customs authorities of that Member State for
                                                                State which are liable to be concerned with imports of
suspension of the release of counterfeit goods entered
                                                                the counterfeit goods referred to in the application.
for free circulation, where he has valid grounds for
suspecting that the importation of such goods
infringing the trade mark owner's rights is                     2.    Applications found to be valid by the
contemplated.                                                   Commission shall be forwarded immediately to the
                                                                customs authorities of the Member States referred to
                                                                in the application. The customs authorities of each
Where the trade mark in question is a Community                 Member State concerned shall forward such
trade mark, the owner thereof may lodge the                     applications to the customs offices referred to in
abovementioned application in writing with the                  paragraph 1.
Commission of the European Communities.
                                                                                         TITLE II
2.    An application for action must contain all such                 Conditions governing action by the customs
information as is necessary to enable the customs                                       authorities
authorities to take effective action and must be
accompanied by proof of the trade mark owner's                                           Article 4
right to protection against counterfeit goods. It must
also indicate the factors on which the trade mark               1.    Where a customs office to which an application
owner's suspicions are based.                                   has been transmitted pursuant to Article 3 establishes
                                                                that goods entered for free circulation correspond to
                                                                the description of the counterfeit goods contained in
                                                                that application, it shall suspend the release thereof,
An application may be made in respect of one or
                                                                and inform the importer accordingly. The customs
more import operations and hence remain valid either
                                                                office shall also inform the trade mark owner of the
for a fixed period, to be determined by the competent
                                                                measure.
authorities of the Member State concerned or, where
appropriate, by the Commission where the application
was lodged with the latter, or for an indefinite period.        2.    Whether the goods are counterfeit shall be
Any period fixed may be extended on application to              determined in accordance with Community law
the authority which determined the initial period.              where it is applicable to the case in point, and where
                                                                it is not, in accordance with the law of the Member
                                                                State in the territory of which they were entered for
3.    The customs authorities or the Commission,                free circulation.
according to the circumstances, shall decide on the
application " and inform the person concerned                   The criteria applied to establish whether the goods
accordingly. The applicant may be required to                   are counterfeit shall be the same as those used to
provide security in an amount sufficient to indemnify           determine whether goods produced in that Member
the competent authorities or compensate the importer            State are counterfeit. Decisions taken by the
for any loss or damage resulting from measures                  competent authority shall set out the grounds on
adopted by those authorities where goods in relation            which they are based.
to which action is taken by the customs authorities
pursuant to this Regulation are subsequently shown
not to be counterfeit. The applicant may also be                3.    Release of the goods shall be suspended until it
required to pay a sum to cover the administrative or            is conclusively established whether or not they are
legal costs resulting from the application.                     counterfeit. However, where suspension of the release
 ---pagebreak---  22.1. 85                             Official Journal of the European Communities                            No C 20/9
of goods referred to in paragraph 1 is confirmed by              are not detected by a customs office and their release
an interim decision of the competent authority and               therefore is not suspended in the manner provided for
further proceedings which the importer is not entitled           in Article 4.
to initiate are required before a final decision, can be
taken, the importer may, by application made in                  2.    Exercise by a customs office of the powers
writing and provided all the import formalities have             conferred on it in regard to combating counterfeit
been completed, secure the release of the goods if               goods shall render it liable to the importer or any
such further proceedings are not initiated within 10             other person holding rights with respect to the goods
working days from the date on which their release                entered for free circulation in the event of his
was suspended.                                                   suffering loss or damage as a result of its action only
                                                                 under the conditions laid down generally by the law
4.     Provided all the other import formalities have            of the Member State concerned.
been completed, goods shall also be released as soon
as proof is furnished to the customs office that it              3.    The civil liability of the trade mark owner shall
has been conclusively established that they are not              be governed by the law of the Member State in which
counterfeit.                                                     the goods in question were entered for free circu-
                                                                 lation.
                         Article 5
 1.    Member States shall adopt the measures                                             Article 7
necessary to allow the competent authorities to
confiscate goods the release of which has been                  This Regulation shall not apply to small quantities of
suspended pursuant to Article 4 where it is established          goods released for free circulation for personal use
that they are counterfeit.                                       and not intended for sale.
Confiscated goods shall be disposed of outside the
channels of commerce in a manner which minimizes                                          Article 8
harm to the trade mark owner. The competent auth-                1.    The Committee on General Customs Rules
orities, may, however, employ methods other than the            provided for in Article 24 of Council Directive
disposal of the confiscated goods outside the channels          79/695/EEC (')        may      examine   any    question
of commerce on condition that they constitute an                concerning the application of this Regulation which is
effective deterrent to trade in counterfeit goods.              raised by its chairman either on his own initiative or
2.    Measures other than confiscation may, in                  at the request of a Member State.
exceptional cases, be taken by the competent auth-
orities where they effectively           deprive    those       2.     The provisions required for applying this Regu-
responsible for the importation of the goods of the             lation shall be adopted in accordance with the
economic benefits of the transaction and constitute an          procedure laid down in Article 26 (2) and (3) of
effective deterrent against engaging in further                 Directive 79/695/EEC.
transactions of the same kind.
                                                                                          Article 9
                        TITLE III                               This Regulation shall enter into force on 1 July 1986.
                     Final provisions
                                                                This Regulation shall be binding in its entirety and
                         Article 6                              directly applicable in all Member States.
1.    The acceptance of an application lodged in
accordance with Article 2 shall not entitle the trade
mark owner to compensation where counterfeit goods              O OJ No L 205, 13. 8. 1979, p. 19.