BETTER BORDERS
The European Commission released a new draft Customs Regulation for the EU in May this year. Will it bring in the changes that IP owners are asking for in European border protection? Peter O’Byrne and Karen Roberts discuss the issues.
Counterfeiting and piracy is an important business challenge for IP rights holders worldwide. It remains a high priority at business, industry and government levels in the European Union, where the border protection regime is one of the world’s most powerful. In May this year, the European Commission proposed a new draſt Customs Regulation for the EU to strengthen IP enforcement at EU borders, to replace Council Regulation (EC) No. 1383/2003.
T e proposed regulation is the result of an action plan prepared by the commission to tackle the signifi cant increase in counterfeit activity in recent years. T e action plan comprised collaborations with EU member states and a public consultation in 2010. It is a timely (or perhaps long awaited) review as there have been a number of concerns relating to the scope and operation of the current regulation. Also, the nature of counterfeit activity has changed, with more and more counterfeit goods couriered in small consignments and sold on-line and then sent by mail.
On the whole, the proposed regulation is a very positive step forward for rights holders, and should also clarify the scope of customs offi cials’ responsibilities. However, in a couple of areas there is disappointment with the commission’s approach.
Extension of coverage
T e proposed regulation extends the scope of IP rights covered by the customs procedures to include trade names (in so far as they are protected as exclusive property rights under national law), topographies of semiconductor products (silicon or microchips) and utility models. T e proposed regulation also now expressly covers parallel imports, which is a very welcome development for brand owners looking to prevent such trade.
T e broadening of the scope of IP rights provides, in theory at least, better and broader protection for IP holders and should be welcomed. T ere will, however, be a corresponding increase in demand on the resources and time of customs in processing such applications and seeking to prevent infringing items relating to these rights from entering the EU. Customs will need to be
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careful how they allocate resources and some rights holders are concerned that customs’ attention may be diverted from trade in the most worrying counterfeit and pirate goods.
Simplifi ed procedure
T e ‘simplifi ed procedure’ is a process whereby goods can be destroyed without there being any need to determine whether an IP right has been infringed under the law of the member state where the rights holder and declarant/holder of the goods agree (or at least do not object) to such destruction. Under the current regulation, the simplifi ed procedure is optional but the proposed regulation makes it mandatory for all member states.
T is is a good development as it harmonises procedures across the EU and assists the prompt destruction of infringing goods without the need for costly and lengthy proceedings. Indeed, for rights holders the simplifi ed procedure is oſt en the single most attractive aspect of the EU customs regime, enabling cost-eff ective and timely disposal of counterfeit and pirated products.
Small consignments
New provisions are proposed for the destruction of counterfeit or pirated non-perishable goods which are transported in ‘small consignments’. T e proposed procedure involves customs contacting the declarant or holder of the goods of a decision to destroy or detain the goods. If the declarant or holder of the goods fails to respond or agree to the destruction, customs will accordingly destroy the goods at customs’ expense. In this circumstance there is no involvement of the rights holder. T e rights holder will only be informed if the declarant or holder of the goods opposes the destruction of the goods in question so that the rights holder can decide if proceedings need to be commenced.
T e motives for such a provision are to establish quick and easy destruction procedures for small consignments of counterfeit/pirated goods without onerous administration for customs and without needing to contact the rights holder every time a
World Intellectual Property Review November/December 2011 59
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