IP Enforcement

Enforcement

An EU directive provides for harmonization of the enforcement of intellectual property rights. The purpose is to create a level playing field in relation to such rights. The directive applies to any infringement of intellectual property rights as provided for under EU or national law. It does not affect the substantive intellectual property rights. It has limited application to copyright.

States must set up measures and procedures necessary to enforce intellectual property rights and take appropriate action against those responsible for counterfeiting and piracy. The method should be sufficiently dissuasive but avoid creating barriers to legitimate trade and offer safeguards against abuse.

Requests to apply intellectual property protection measures may be submitted by the holders of rights or their representative or persons authorized by them. It also applies to representative or management bodies.

Parties may be obliged to produce evidence under their control. Where there is a demonstrable risk of the right being infringed even before the commencement of proceedings, the authorities may order prompt provisional measures to preserve evidence.

Court Orders

At the request of the rights holders, the judicial authorities may order any person to provide information on the origin of goods or services which has helped to infringe intellectual property rights and on the networks for distribution or provision. If that person;

• is found in possession of infringing goods for commercial purposes.
• if found to be using the infringing services for commercial purposes.
• found to be providing services used in infringing activities for commercial purposes.
• indicated as being involved in the production, manufacture, or distribution of infringing goods.

Judicial authorities may also serve the alleged infringer

• with an interim injunction intended to prevent infringement and
• forbid on a provisional basis to the continuation of the infringement.
• make continuation subject to lodgment of guarantees intended to ensure compensation.

In particular cases, courts may authorize the precautionary seizure of the assets of the infringer including blocking accounts or other assets.

The judicial authorities may order a recall of goods that have been found to infringe property rights. This includes both the goods as well as materials and implements used in their creation. Pirated and counterfeit goods may be ordered to be destroyed. An injunction may be issued against the infringer prohibiting continuation of infringements. Non-compliance may be subject to a recurring penalty payment.

Courts may order pecuniary compensation to be paid instead of applying for removal measures if the person acted unintentionally and the execution of the measures would cause him disproportionate harm.

The injured party may be ordered to pay damages in reparation of loss incurred. This would also court costs, lawyer’s fees incurred by the successful party must be borne by the other party.

There are no specific provisions regarding criminal sanctions. States are free to apply criminal sanctions.

Customs Seizure

EU regulation mandates customs authorities to take action against goods suspected of infringing intellectual property rights. The regulation simplifies procedures for lodging applications with the customs authorities. The rights to invoke customs assistance covers new intellectual property rights such as plant varieties, geographical indications, and designations of origins.

The regulation applies to counterfeit and pirated goods. It covers

• supplementary protection certificates
• copyright and related rights designations of origin,
• new plant varieties,
• geographical indications,
• trademarks,
• any mold or matrix designed or adapted for the manufacture of goods infringing intellectual property rights.

Where goods are suspected of infringing intellectual property rights, the right holder may make a written application to the customs authorities. This must include details of the goods concerned, information concerning the nature of the alleged infringement, and particulars of the right holder. The right holder may also request the customs authority assistance of several member states where he is the holder of a community trademark, design, or model community protection, new plant variety, designation of origin, geographical indication, or designation protected by the EU.

Goods found to infringe intellectual property rights;

• may not be brought into the customs territory of the EU.
• released for free circulation.
• re-exported.
• placed under a suspensive arrangement.
• withdrawn from the customs territory.

If there is a good reason to suspect infringement, the release of the goods may be suspended for 3 working days, during which the right holder may submit an application. Action must take place in a period. This may not exceed one year. The decision to take action is notified to the customs office.

Devices to be Prohibited

Member states must take action to prohibit

• the manufacture, import, sale, possession for commercial purposes of illicit devices; these are those comprising equipment or software designed or adapted to give unauthorized access to a protected service.
• the installation, maintenance, or placement for commercial purposes of an illicit device.
• the use of commercial communication to promote illicit devices.

States must take steps necessary to provide sanctions which are an effective and proportionate deterrent to the potential impact of the infringing activity. They must ensure that service providers whose interests are affected by the infringing action carried out in the territory can seek an action for damages or an injunction where appropriate to seize the illicit devices.