CELEX: 51993PC0329
Language: en
Date: 1993-07-13
Title: Proposal for a COUNCIL REGULATION (EEC) laying down measures to prohibit the release for free circulation, export or transit of counterfeit and pirated goods

2 . 9 . 93                             Official Journal of the European Communities                                No C 238 /9
                                                              II
                                                      (Preparatory Acts)
                                                 COMMISSION
              Proposal for a Council Regulation (EEC) laying down measures to prohibit the release for free
                               circulation, export or transit of counterfeit and 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
Having regard to the Treaty establishing the European              prohibition can be properly enforced ;
Economic Community and in particular Article 113
thereof,
                                                                   Whereas action by the customs authorities to prohibit the
Having regard to the proposal from the Commission,
                                                                   release for free circulation of counterfeit or pirated
                                                                   goods should also apply to the export of such 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              terms of the draft GATT agreement on trade-related
and Social Committee,                                              intellectual property issues, including trade in counterfeit
                                                                   goods, in particular the measures to be taken at the
                                                                   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          Whereas it must be stipulated that the customs auth­
been in force since 1 January 1988 ; whereas conclusions           orities are empowered to take decisions on applications
should be drawn from experience gained during the early            for action to be taken that are submitted to them ;
years of its implementation with a view to improving the
operation of the system instituted thereunder;
                                                                   Whereas action by the customs authorities must consist
Whereas the marketing of counterfeit goods and pirated             either in suspending the release for free circulation or the
goods causes considerable injury to law-abiding manu­              export of goods suspected of being counterfeit or pirated
facturers and traders and misleads consumers, whereas              or in seizing such goods when they are carried to the
such goods should as far as possible be prevented from             Community under transit procedure, for as long as is
being placed on the market and measures should be                  necessary to enable it to be determined whether the
adopted to that end to deal effectively with this unlawful         goods are actually counterfeit;
activity without impeding the freedom of legitimate
trade, whereas this objective is also being pursued
through efforts being made along the same lines at inter­          Whereas the objective to be achieved by the introduction
national level ;
                                                                   of such a procedure does not require the drawing up of
                                                                   Community provisions either as regards the designation
                                                                   of the judicial authority competent to determine whether
Whereas in so far as counterfeit or pirated goods are              the goods entered for free circulation or for export or
imported from third countries it is important to prohibit          seized during a transit procedure are counterfeit or
                                                                   pirated, or as regards the procedures to be followed for
O OJ No L 357, 18 . 12 . 1986, p. 1 .                              referral to that authority; whereas in the absence of
 ---pagebreak--- No C 238 / 10                           Official Journal of the European Communities                                    2 . 9 . 93
Community rules on the subject the said competent                     counterfeit or pirated or where such goods are
authority should furthermore decide cases submitted to it             carried under a transit procedure ;
by reference to the criteria which are used to determine
whether goods produced in the Member State concerned
infringe intellectual property rights ;                               and              i                                       ,
                                                                  (b) the measures which shall be taken by the competent
Whereas it is necessary to determine the measures to be               authorities with regard to those goods where it has
applied to goods entered for free circulation or for                  been established that they are indeed counterfeit or
export or carried under a transit procedure where it is               pirated.
established that they are counterfeit or pirated ; whereas
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         2.    For the purposes of this Regulation :
further transactions of the same kind ;
                                                                  (a) 'counterfeit goods' means :
Whereas in order to avoid serious disruption to the
clearing of goods contained in travellers' personal                   — goods, including the packaging, thereof, bearing
luggage, it is necessary to exclude from the scope of this                without authorization a trademark which is
Regulation goods which may be counterfeit or pirated                      identical to the trademark validly registered in
which are imported from third countries within the limits                 respect of the same type pf goods, or which
laid down by Community rules in respect of relief from                    cannot be distinguished in its essential aspects
customs duty;                                                             from such trademark, and which thereby
                                                                          infringes the rights of the owner of the
                                                                          trademark in question under Community law or
                                                                          the   law    of   the Member     State   where       the
Whereas uniform application of the common rules laid
down by this Regulation must be ensured and to that                       application for action by the customs authorities
end a Community procedure must be established                             is made,
enabling measures implementing these rules to be                      r             .
adopted within appropriate periods ;
                                                                      — any trademark symbol (logo), whether or not
                                                                          presented separately, in the same circumstances
                                                                          as the goods referred to in the first indent;
Whereas it will be appropriate to consider the possibility
of increasing the number of intellectual property rights
covered by this Regulation in the light, inter alia, of the           — any tool, mould or similar material specifically
experience gained in its implementation ;                                 intended for the manufacture of a counterfeit
                                                                          trademark or of a product bearing such a
                                                                          trademark, provided such tools, moulds or
                                                                          materials infringe Community law or the law of
Whereas Regulation        (EEC)     No     3842/86    should              the Member State where the application for
therefore be repealed,                                                    action by the customs authorities is made ;
                                                                      — packaging materials bearing the trademarks of
HAS ADOPTED THIS REGULATION :
                                                                          counterfeit products, presented separately, in the
                                                                          same circumstances as the goods referred to in
                                                                          the first indent;
                        CHAPTER I
                          General
                                                                  (b) 'pirated goods' means goods made without the
                                                                      consent of the holder of the copyright or neigh­
                                                                      bouring rights, or of the holder of a design right,
                          Article 1                                   whether or not registered under national law, or of a
                                                                      person duly authorized by him in the country of
1.     This Regulation lays down :                                    production and which are made directly or indirectly
                                                                      from an article, where the making of those goods
                                                                      would have constituted an infringement of the right
(a) the conditions under which the customs authorities                in question under Community law or the law of the
     shall take action where goods entered for free circu­            Member State where the application for action by
     lation or for export are suspected of being                      the customs authorities is made ;
 ---pagebreak---        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             For the purposes of this Article, 'entered for free circu­
      trademark, as referred to in (a), and/or one of the         lation' and and 'for export' mean entered on the basis of
      rights referred to in (b), or any other person autho­       declarations made in writing or orally or by any other
      rized to use the trademark and/or rights, or their          means .
      representative ;
                                                                  2.    The application referred to in paragraph 1 shall
                           /
                        «
                 i
                                                                  contain :
(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                — a sufficiently detailed description of the goods to
       Community Customs Code (1).                                    enable them to be recognized by the customs auth­
                                                                      orities, and
                                                                                \
3.       This Regulation shall not apply to goods which           — proof that the applicant is the owner or holder of the
bear a trademark with the consent of the owner of that                right for the goods in question.
trademark or which are protected by a copyright or
neighbouring right or a design right and which have               The owner or holder of the right must also provide all
been made with the consent of the holder of the right             other pertinent information available to him to enable
but which are entered for free circulation or for export          the competent authority to act on the application in full
without the owner's or the holder's consent.                      knowledge of the facts, without, however, this infor­
                                                                  mation being a condition of admissibility of the
                                                                  application.
Nor shall it apply to goods referred to in the first
subparagraph entered for free circulation or for export           As regards pirated goods, this information shall,
which bear a trademark under conditions other than                wherever possible, contain the following :
those agreed with the owner of the rights in question.
                                                                  — the place where the goods are situated or the
                                                                      intended destination,
                          CHAPTER II                              — particulars identifying the consignment or packages,
Prohibition of the release for free circulation, export or        — scheduled date of arrival or departure of the goods,
         transit of counterfeit goods and pirated goods
                                                                  — the means of transport used,
                             Article 2
                                                                  — the identity of the importer or exporter.
The release for free circulation, export or carriage under
a transit procedure of goods found to be counterfeit or           3.    The application must specify the ( length of the
pirated on completion of the procedure provided for in            period during which the customs authorities are
Article 5 shall be prohibited.                                    requested to take action.
                                                                  4. The applicant may be charged a fee to cover the
                          CHAPTER III                             administrative costs incurred in dealing with the
                                                                  application. The fee must be commensurate with the
     Application for action by the customs authorities            costs incurred and must not have the effect of deterring
                                                                  the applicant.
          4
                             A rticle 3
                                                                  5. The authority with which an application drawn up
1.       In each Member State, an owner or holder of a            pursuant to paragraph 2 has been lodged shall take a
right may lodge an application in writing with the                decision on the application and shall immediately notify
competent authority for the release of counterfeit or             the applicant in writing of that decision.
pirated goods entered for free circulation or for export
in that Member State to be refused by the customs auth­           Where the application is granted, it shall specify the
orities or for the seizure of such goods where they are           period during which the customs authorities shall take
carried to that Member State under a transit procedure,           action. That period may, upon application by the owner
where he has valid grounds for suspecting that the                or holder of the right, be extended by the authority
                                                                  which took the initial decision .
importation, exportation or carriage under a transit
procedure of such counterfeit or pirated goods is
contemplated in that Member State.                                Refusals to grant an application must contain the reasons
                                                                  for the refusal and shall be open to appeal.
                -                          ">.)                   6. Member States may require the owner or holder of
0) OJ No L 302, 19. 10. 1992, p. 1 .                              a right, where his application has been granted, or where
 ---pagebreak--- No C 238 / 12                           Official Journal of the European Communities                                    2 . 9 . 93
the release of a consignment of goods is suspended or             The customs office shall immediately inform the
the goods are seized whilst under a transit procedure             authority which decided on the application in
pursuant to Article 5 ( 1 ), to provide a security :              accordance with Article 4 . The customs office, or the
                                                                  competent authority which decided on the application,
 — to cover any liability on his part vis-a-vis the               shall immediately inform the person making the entry
    importer, exporter or the persons involved in the             and the person who applied for action to be taken.
    transit procedure where the procedure initiated               Without prejudice to the protection of confidential infor­
    pursuant to Article 5 ( 1 ) is discontinued owing to an       mation, they shall afford the applicant and the importer,
    act or omission by the owner or holder of the right           the exporter or the persons involved in the transit
    or where the goods in question are subsequently               procedure the opportunity to inspect the goods the
    found not to be counterfeit or pirated,                       release of which has been suspended or which have been
                                                                  seized .
— to ensure payment of the costs incurred in                      When examining the goods the customs office may take
    accordance with the provisions of this Regulation in          samples in order to expedite the procedure.
    keeping the goods under customs control pursuant to
    Article 5 .
                                                                  2.     The law in force in the Member State in whose
                                                                  territory the goods were entered for free circulation or
The security must not be such as to constitute an undue           for export or where they were seized during a transit
deterrent to initiating or implementing this procedure.           operation shall apply as regards :
7. The owner or holder of the right shall be obliged to           (a) the referral to the authority competent to take a
inform the authority referred to in paragraph 1 should                 substantive decision and inform without delay the
the right cease to be validly registered or should it                  customs office specified in paragraph 1 of such
expire.                                                                referral, unless referral is undertaken by that customs
                                                                       office ;
8 . Member States shall designate the customs                     (b) reaching the decision to be taken by that authority.
department competent to decide on the application                      In the absence of Community rules in this regard,
referred to in this Article .                                          the criteria to be used in reaching that decision shall
                                                                       be the same as those used to determine whether
Member States may, in addition to the department                       goods produced in the Member State concerned
referred to in the first subparagraph, designate another               infringe the rights of the owner or holder. Reasons
authority as the authority competent to decide on the                  shall be given for decisions adopted by the
application.                                                           competent authority.
                                                                                             Article 6
                          Article 4
                                                                   1 . If, within ten working days of notification of
The decision granting the application by the owner or             suspension of release or of seizure, the customs office
holder of the right shall be forwarded immediately to the         referred to in Article 5 ( 1 ) has not been informed that
customs offices of the Member State which are liable to           the matter has been referred to the authority competent
be concerned with imports, exports or transit operations          to take a substantive decision on the case in accordance
involving the counterfeit or pirated goods referred to in         with Article 5 (2) or that the duly empowered authority
the application.                                                  has adopted interim measures, the goods shall be
                                                                  released, provided all the import or export formalities
                                                                   have been complied with and the seizure has been lifted.
                       CHAPTER IV
                                                                   2. In the case of goods suspected of infringing design
Conditions governing action by the customs authorities            rights, the owner, the importer or the consignee of the
and by the authority competent to take a substantive              goods shall be able to have the goods in question
                           decision                               released or their seizure lifted, against provision of a
                                                                  security, provided that :
                          A rticle 5
                                                                  — the customs office referred to in Article 5 ( 1 ) has
 1.   Where a customs office to which the decision                     been informed, within the time limit referred to in
granting an application by the owner or holder of a right              paragraph 1 of this Article, that the matter has been
has been forwarded pursuant to Article 4 is satisfied,                 referred to the authority competent to take a
after consulting the applicant where necessary, that                   substantive decision referred to in paragraph 1 of this
goods entered for free circulation or for export or which              Article,
are under a transit procedure correspond to the
description of the counterfeit or pirated goods contained          — on expiry of the time limit, the authority empowered
in that decision, it shall suspend release of the goods or             for this purpose has not imposed interim measures,
seize them .                                                           and
 ---pagebreak--- 2 . 9 . 93                               Official Journal of the European Communities                           No C 238 / 13
— all the import or export formalities have been                   2. The counterfeit or pirated goods may be handed
     completed.                                                    over to the public exchequer. In that case, the provisions
                                                                   of point (a) of paragraph 1 shall apply.
The security must be sufficient to protect the interests of
the owner or holder of the right. Payment of the security
shall be without prejudice to the other actions open to
the owner or holder of the right. The security shall be            3.    Without prejudice to the protection of confidential
released if that person does not exercise his right to             information, the customs office concerned or the
institute legal proceedings within 20 working days of the          competent authority shall inform the owner or holder of
date when he is notified of the suspension of release or           the right, upon request, of the names and addresses of
the seizure .                                                      the consignor, of the importer or exporter, of the manu­
                                                                   facturer and of the consignee of the goods found to be
                                                                   counterfeit or pirated and of the quantity of the goods in
3. The condidions governing storage of the goods                   question.
during the period of suspension of release or seizure
shall be determined by each Member State.
                          CHAPTER V                                                       CHAPTER VI
Provisions applicable to goods found to be counterfeit or                                Final provisions
                         pirated goods
                            A rticle 7
                                                                                            Article 8
1 . Without prejudice to the other rights of action
open to the owner of a trademark which has been found               1 . Save as otherwise provided by the law of the
to be counterfeit or the holder of a copyright or neigh­           Member State concerned, the acceptance of an
bouring right or a design right which has been found to            application drawn up in accordance with Article 3 (2)
be pirated, Member States shall adopt the measures                 shall not entitle the owner or holder of a right to
necessary to allow the competent authorities :                     compensation where counterfeit or pirated goods are not
                                                                   detected by a customs office and their release is not
                                                                   therefore suspended or no measure is taken interrupting
(a as a general rule, and in accordance with the                   the transit operation as provided for Article SCI ").
       relevant provisions of national law, to destroy goods
       found to be counterfeit or pirated, or dispose of
       them outside the channels of commerce in such a
      way as to preclude injury to the owner or holder of
       the right, without compensation of any sort;                2. Save as otherwise provided by the law of the
                                                                   Member State concerned, exercise by a customs office or
                                                                   by another duly empowered authority of the powers
(b) to take, in respect of such goods, any other measures          conferred on them in regard to combating counterfeit or
      having the effect of effectively depriving those             pirated goods shall not render them liable to the
      responsible for importation, exportation or transit of       importer or exporter or any other person holding rights
       the economic benefits of the transaction .                  with respect to the goods entered for free circulation or
                                                                   for export or carried under a transit procedure, in the
      The following, inter alia, shall not be regarded as          event of his suffering loss or damage as a result of their
      having such effect :                                         action.
       — re-exporting the counterfeit or pirated goods in
           the unaltered state,
                                                                   3. The civil liability of the owner or holder of a right
                                                                   shall be governed by the law of the Member State in
      — other than in exceptional cases, simply removing           which the goods in question were entered for free circu­
           the trademarks which have been affixed to the
           counterfeit goods without authorization,
                                                                   lation or for export or seized during a transit procedure.
      — entering the goods for a different customs
           procedure.
                                                                                            Article 9
Moreover, each Member State shall impose penalties to              This Regulation shall not apply to goods of a
discourage further transactions of the same kind. Such             non-commercial nature contained in travellers' personal
penalties must be effective, commentate with their                 luggage within the limits laid down in respect of relief
purpose and have adequate deterrent effect.                        from customs duty.
 ---pagebreak--- No C 238 / 14                        Official Journal of the European Communities                                 2 . 9 . 93
                        Article 10                                                      Article 12
The provisions required for applying this Regulation           Member States shall communicate all relevant infor­
shall be adopted in accordance with the procedure laid         mation on the application of this Regulation to the
down in Article 11 .                                           Commission .
                                                               The Commission shall communicate this information to
                        Article 11                             the other Member States .
1 . The Commission shall be assisted by the committee          The details of the information procedure shall be drawn
set up by Article 247 of Regulation (EEC) No 2913/92.          up in the framework of the implementing provisions in
                                                               accordance with Article 11 (2) and (3).
2.    The representative of the Commission shall submit
to the committee a draft of the measures to be taken.                                   Article 13
The committee shall deliver its opinion on the draft           Within two years following the entry into force of this
within a time limit which the chairman may lay down            Regulation, the Commission shall, on the basis of the
according to the urgency of the matter, if necessary by        information referred to in Article 12, report to the
taking a vote.                                                 European Parliament and the Council on the operation
                                                               of the system instituted thereunder and shall propose
The ppinion shall be recorded in the minutes ; in              such amendments and additions as need to be made
addition, each Member State shall have the right to ask        thereto. An initial evaluation shall be carried out at the
to have its position recorded in the minutes.                  end of the first year.
The Commission shall take the utmost account of the                                     A rticle 1 4
opinion delivered by the committee. It shall inform the
committee of the manner in which its opinion has been          Council Regulation (EEC) No 3842/ 86 of 1 December
taken into account.                                             1986 is repealed.
3. The Committee may examine any matter                                                 Article 15
concerning the prohibition of release for free circulation,    This Regulation shall enter into force on 1 July 1994.
export or transit of counterfeit or pirated goods raised
by the chairman, on his own initiative or at the request       This Regulation shall be binding in its entirety and
of a Member State .                                            directly applicable in all Member States .