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Enforcement of intellectual property rights
Until now, the means of enforcing intellectual property rights has not been harmonised in any respect at European level. By bringing enforcement measures into line with each other throughout the European Union (EU), this directive seeks to create a level playing field for applying intellectual property rights. It also aims to harmonise EU countries’ legislation, thus ensuring that intellectual property enjoys an equivalent level of protection in the internal market.
Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights.
Up to now, the action taken by the European Community (EC) in the field of intellectual property has focused mainly on the harmonisation of national substantive law and the creation of a unitary right at Community level. For example, certain national intellectual property rights, such as trademarks, designs, patents for biotechnological inventions and certain aspects of copyright and related rights, have been harmonised. The Community has also created some unitary rights at Community level; these rights are immediately valid throughout the EC and include the Community trademark and, more recently, Community designs. Discussions are also under way in the Council of Ministers with regard to creating a Community patent.
While the gradual harmonisation of substantive law on intellectual property rights has promoted the free movement of goods between European Union (EU) countries and made the rules applicable more transparent, the means of enforcing intellectual property rights have not been harmonised at all until now. This directive aims to change that.
Counterfeiting and piracy, and infringements of intellectual property in general, are phenomena that are becoming increasingly widespread and have now taken on an international dimension. As a result, they represent a serious threat to national economies and governments. In the European internal market, these phenomena take particular advantage of the national disparities that may exist in the means by which intellectual property rights are enforced. In other words, counterfeit and pirated products are more likely to be manufactured and sold in countries that are less effective than others in combating counterfeiting and piracy.
Whilst the principal objective of this directive is to ensure an equivalent level of protection for intellectual property in EU countries, there are also other objectives, such as:
- promoting innovation and business competitiveness. If counterfeiting and piracy are not punished effectively, they can lead to a loss of confidence in the internal market. Such a situation would discourage creators and inventors, and endanger innovation and creativity in the Community;
- safeguarding employment in Europe. In social terms, the damage suffered by businesses as a result of counterfeiting and piracy is reflected ultimately in the number of jobs they offer;
- preventing tax losses and destabilisation of the markets. The tax losses caused by counterfeiting and piracy are significant. This phenomenon is a genuine threat to the economic equilibrium since it can also lead to a destabilisation of the more fragile markets that it attacks (such as the market in textile products). In the multimedia products industry, counterfeiting and piracy via the Internet are steadily increasing and have already resulted in very considerable losses;
- ensuring consumer protection. Counterfeiting and piracy are generally accompanied by deliberate cheating of consumers as to the quality they are entitled to expect from a product bearing, for instance, a famous brand name. This is because counterfeit and pirated products are produced without the checks made by the competent authorities and do not comply with minimum quality standards. When they buy counterfeit or pirated products, consumers do not in principle benefit from a guarantee, after-sales service or effective remedy in the event of damage. These activities may also pose a real threat to the health of the consumer (counterfeit medicines) or to his/her safety (counterfeit toys or parts for cars or aircraft);
- ensuring the maintenance of public order. Counterfeiting and piracy infringe labour legislation (clandestine labour), tax legislation (loss of government revenue), health legislation and legislation on product safety.
The measures provided for by this directive apply to any infringement of the intellectual property rights as provided for by Community law and/or by the national law of the EU country concerned. This directive does not, on the other hand, affect the provisions on the enforcement of rights or those on exceptions contained in Community legislation concerning copyright and rights related to copyright.
Furthermore, the directive does not affect:
- Community provisions governing the substantive law on intellectual property;
- EU countries’ international obligations and notably the Agreement on Trade-Related Aspects of Intellectual Property Rights (the “TRIPS Agreement”);
- any national provisions in EU countries relating to criminal procedures or penalties in respect of infringement of intellectual property rights.
EU countries should set up the measures and procedures needed to ensure the enforcement of intellectual property rights and take appropriate action against those responsible for counterfeiting and piracy. These measures and procedures should be sufficiently dissuasive, but avoid creating barriers to legitimate trade and offer safeguards against their abuse.
Persons entitled to request the application of measures and procedures
A request to apply intellectual property protection measures may be submitted by the holders of intellectual property rights, their representatives and all other persons authorised to use those rights in accordance with the applicable law. Wherever they represent intellectual property right holders, rights management or professional defence bodies may also ask to apply these measures.
Under certain conditions, parties may be obliged to produce evidence that is under their control. EU countries should also take the necessary measures to enable the responsible authorities to order, on application by a party, the communication of banking, financial or commercial documents under the control of the opposing party.
Where there is a demonstrable risk of an intellectual property right being infringed, even before the commencement of proceedings on the merits of the case, the competent judicial authorities may order prompt provisional measures to preserve evidence.
Right of information
At the request of the right holder, the judicial authorities may order any person to provide information on the origin of the goods or services that are thought to infringe an intellectual property right and on the networks for their distribution or provision, if that person:
- was found in possession of the infringing goods for commercial purposes;
- was found to be using the infringing services for commercial purposes;
- was found to be providing services used in infringing activities for commercial purposes;
- was indicated as being involved in the production, manufacture or distribution of the infringing goods or services.
Provisional and precautionary measures
At the request of the applicant, the judicial authorities may serve the alleged infringer with an interlocutory injunction intended to:
- prevent any impending infringement of an intellectual property right;
- forbid, on a provisional basis, the continuation of the alleged infringements of an intellectual property right;
- make such continuation subject to the lodging of guarantees intended to ensure the compensation of the right holder.
In certain cases, the judicial authorities may authorise the precautionary seizure of the fixed and non-fixed assets of the alleged infringer, including the blocking of his/her bank accounts and other assets.
Measures resulting from a decision on the merits of the case
At the request of the applicant, the judicial authorities may order the recall of the goods that have been found to infringe an intellectual property right. The goods concerned as well as the materials and implements used for their creation may also be removed from the channels of commerce. Finally, the judicial authorities may order the destruction of counterfeit or pirated goods.
Where a judicial decision has been taken finding an infringement of an intellectual property right, the judicial authorities may issue against the infringer an injunction aimed at prohibiting the continuation of the infringement. Where appropriate, non-compliance with an injunction may be subject to a recurring penalty payment, with a view to ensuring compliance.
The competent judicial authorities may also order pecuniary compensation to be paid to the injured party instead of applying the removal or destruction measures, if that person acted unintentionally and if execution of these measures would cause him/her disproportionate harm
Damages and legal costs
On application of the injured party, the competent judicial authorities may order an infringer to pay the right holder damages in reparation of the loss incurred.
The court costs, lawyer’s fees and any other expenses incurred by the successful party will normally be borne by the other party.
Sanctions by EU countries
Unlike the Commission’s initial proposal, the directive, as adopted, contains no provisions on criminal sanctions against fraudsters. The directive merely stipulates that EU countries are free to apply other sanctions, which go further than the provisions set out, to prosecute offenders.
In October 1998, the Commission presented a Green Paper on the fight against counterfeiting and piracy in the internal market in order to launch a debate on this subject with the interested parties. This consultation exercise confirmed that the disparities between the national systems of intellectual property rights were having a harmful effect on the proper functioning of the internal market. In November 2000, after this consultation phase, the Commission presented a follow-up Communication to the Green Paper proposing an action plan to improve and intensify the fight against counterfeiting and piracy. Among the initiatives proposed in that action plan was a directive that would harmonise national provisions on the means by which intellectual property rights are enforced.
|Act||Entry into force||Deadline for transposition in the Member States||Official Journal|
OJ L 195 of 2.6.2004