EU: New Regulation to modernize customs enforcement of IPRs
The practice regarding customs enforcement of IPRs of the last 10 years has helped the EU institutions to understand the need to modernize the regime contained in Regulation 1383/2003. In the framework of its global strategy on IPR to boost creativity and innovation, the Commission proposed a Regulation on Customs Enforcement of IPRs. Such proposal was discussed in the European Parliament last week. The role customs play to stop the entry of IPR infringing goods coming from outside EU countries is highly important. Some of the tasks the customs are empowered with are the detention, retention and destruction of goods suspicious of infringing IPRs. It is within this context that the Commission understood that some amendments need to be included in Regulation 1383/2003, in order to improve the effectiveness of customs control. In addition, some new ways of infringement have developed over time falling outside the scope of the Regulation, making it “useless” and therefore, leaving IPRs unprotected. The Commission Proposal for a new Regulation was approved in the European Parliament last 3rd of July in a plenary session. Here are the main features of the proposal in comparison to the existing regime:
- Widening the categories of IPR infringements included in the scope of the Regulation: within the scope of action of the newly adopted Regulation it has been included parallel trade (goods placed on the market without the due right- owner´s consent and distributed through different channels, not approved by the right holder) and look alike trademarks (goods likely to cause confusion on the general public). Thanks to these amendments, customs will be capable of acting when faced with such goods at the border.
- Widening the list of IPRs to be protected by customs at the border: the new Regulation will include other rights that were left out of the scope of protection of Regulation 1383/2003, such as trade names, topographies of semiconductor products, utility models, devices to circumvent technological measures and non-agricultural geographical indications.
- The creation of a procedure for the anticipated destruction of small consignments containing counterfeit goods covered by an application: the Regulation includes a specific procedure for the anticipated destruction of these type of consignments. While the Commission Proposal did not define what is to be understood by “small consignments”, the European Parliament included an amendment to make it clear that it refers to 3 items or less, weighing a maximum of 2 kilos and contained in one package.
The amendments introduced by the European Parliament should now be discussed in the Council. From Salvador Ferrandis & Partners we believe it is a good idea to modernize the existing legal framework and make it suitable to the new challenges IP faces with the creation of new ways of infringement. Also, we are of the opinion that the adoption of the new Regulation will cast some light on some obscure matters contained in Regulation 1383/2003, at least, that’s one of the reasons why it was believed some changes in the already Regulation was needed.
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- New Briefing Paper on Customs’ Proceedings for the Seizure of Counterfeits in Spain and the EU
- EUIPO Researches on Online Business Models Used to Infringe IP Rights
- About the Ubiquity Criterion and the International Jurisdiction on Matters Relating to Seizure of Counterfeit Goods in Customs
- Alberto Bosch will participate as speaker in the AIPPI Congress in Madrid, 18-19 February 2016