The new EU Regulation on the improved protection of IP rights in customs authorities
There is a growing threat to business, consumers and the society as a whole due to increase in numbers of counterfeit goods and transportation of items infringing intellectual property rights across Europe. The importance of this issue is revealed by statistical information gathered in the recent years – the European Commission in its annual report on customs detentions for 2012 states that during the year 2011 the customs authorities of the nearly 115 million goods were detained in the European Union Member States as a result of suspected infringements of the intellectual property rights (the value of the detained goods was close to EUR 1.3 billion); the number is larger by 12 million compared to the year 2010.
After the European Council’s encouragement to pay attention to the urgency of this problem, the revision of the regulation in force was started and the new EU Regulation No. 608/2013 concerning custom enforcement of intellectual property rights came into force on 19 July 2013 following the approval of the Council’s proposals.
Amendments to the new Regulation
The new Regulation, replacing the former Regulation No. 1383/2003 and improving intellectual property rights protection mechanism in the Member States’ customs offices, will become applicable from 1 January 2014.
First, the Regulation extends the range of protected intellectual property rights, by classifying as objects of intellectual property rights not only such objects as the trademarks, design, copyright and related rights, patents, geographical indications, plant varieties, but also the trade names, if they are protected under the national law, as well as the utility models of topography of semiconductor products.
In addition, the new Regulation requires all the Member States to implement and apply the simplified procedure of utilization of counterfeit goods detained in the customs without initiating legal dispute in order to find out whether there was a violation of an intellectual property right, which is currently in force only in a few Member States including Lithuania.
Special procedure applicable to “small consignments”
Finally, in order to minimize costs of utilization of small consignments of counterfeit goods and an administrative burden, a special procedure applicable to “small consignments” is provided in the new Regulation, i.e. consignments transported by post and courier, a total number of which is three or less and the total weight of which is less than 2 kilograms.
Unlike previously, in case of “small consignments” the customs officials are obliged to ask a declarant or owner of the consignment for its consent with utilization of the goods; if such consent is obtained or may be presumed, they are entitled to utilize the counterfeit goods directly without any notice to the owner of the intellectual property rights.
It was established that the intellectual property rights’ owner would be informed about application of the “small consignments” procedure only when the consent of its owner with utilization of the consignment of the goods is not obtained or cannot be presumed; this would grant the opportunity to the owner of the intellectual property rights to initiate the legal proceedings in defence of violated rights.
Furthermore, the procedure can be applied only if the owner of the intellectual property rights has made a request regarding the protection of its rights in the general application presented to the customs authority; the customs authority must have an opportunity to demand the copyright owner for compensation of the costs of implementation of the procedure, incurred by the customs authority.