the current european union legal framework in the - wipo

The Current European Union

Legal Framework

in the

Enforcement of Intellectual Property

Rights (IPRs)

Richard van Oerle

Intellectual property rights:

a key issue in the European Union

IP rights are useful in order to:

• Encourage innovation and creativity by ensuring a fair return oninvestment � stimulate investments and R&D activities in the EU

• Foster economic growth

• Facilitate the access of SME’s to start-up finance and venture capital (i.e. cost-free mechanisms)

• Stimulate cultural diversity

• Foster high level employment in the EU

• Help protect the consumers



And … IP rights have other benefits:

• Providing guarantees regarding the quality and safety of products

• Enabling indirect exploitation

• Dissemination of technical information

• Foster high level employment in the EU

• Protection and enforcement of intellectual property are crucial for the EU's ability to compete in the global economy.



… Whilst infringement, including counterfeiting and piracy:

• threatens further investments and economic growth in the EU

• threatens employment

• slows down innovation in useful products (e.g. pharmaceuticals)

• represents a risk for the health and safety of citizens (counterfeited medicines, toys, foodstuffs, spare parts for cars…)

• is a part of organised crime (high profits, low penalties)

• has an impact on the budget of the Member States (tax losses



• The EU works in the WTO (TRIPs)

• The EU negotiates IPR provisions in its bilateral trade agreements

• Long-term strategy for the enforcement of IP rights in third countries

• EU-China action plan to increase customs co-operation on protecting IP rights

• With the authorities of certain, the EU conducts "political dialogues" on IP issues (usually involving European industry), with third countries

• The EU runs technical co-operation programs intended to help enhance IPR system in third countries.

• The EU was also involved in the development of the Anti-Counterfeiting Trade Agreement (ACTA) …

Various Measures for Enhancing the

Protection of IP rights in the EU

European Observatory on Counterfeiting and Piracy

gathering evidence and knowledge about counterfeiting;

sharing best practices on enforcement techniques;

creating public awareness

Regulation (EU) No 386/2012 (19th April 2012) entrusting the Office for Harmonization in the Internal Market (OHIM) with tasks related to the enforcement of intellectual property rights

Various Measures for Enhancing the

Protection of IP rights in the EU

• Standardization of IPR

• The Directive 2004/48/EC on the enforcement of intellectual property rights (civil measures)

• Customs : Regulation EC No 1383/2003 concerning custom actions against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights

• Police : Council decision 2009/371/JHA of 6 April 2009 establishing the European Police Office (Europol)

Various matters for enhancing the

protection of IP rights in the EUDigital environment:

• Directive 2001/29/EC on the harmonization of certain aspects of copyrights and related rights in the information society

• Directive 2009/24/EC on the legal protection of computer programs

• Directive 2000/31/EC on electronic commerce

• Directive 2009/140/EC amending Directives 2002/21/EC on a common regulatory framework for electronic communications network and facilities and 2002/20/EC on the authorization of electronic communication networks and services

Council Regulation 1383/2003 EC

22 July 2003

EU customs enforcement

• concerning customs action against goods suspected of

infringing certain intellectual property rights and the measures

to be taken against goods found to have infringed such rights

2011: +15% compared to 2010


Countries of provenance.

• China 73%

• Turkey for foodstuffs,

• Panama for alcoholic beverages,

• Thailand for non-alcoholic beverages,

• Hong Kong for mobile phones, their accessories and for computer equipment and

• Syria for recorded CD/DVD.


Product categories.

• medicines 24%

• packaging materials (21%), cigarettes (18%),

• clothing (4%),

• accessories for mobile phones (3%)

• labels, tags and stickers (2%).


Destruction of goods.

• In 90% of the cases:

– goods were either destroyed after the holder of the goods and the right-holder agreed on destruction, or

– the right-holder initiated a court case to establish the IPR infringement.

• In only 7,5% of the cases, goods were released because they were either original goods (3%) or the right-holder did not react to the notification by customs (4,5%).

harmonization

Certain aspects of substantive laws on IP rights

were harmonised:

– Trademarks (Regulation 2009/207 on CTM; Directive 2008/95/CE)

– Designs (Regulation 6/2002 on CD; Directive 98/71/CE)

– Copyright (Bern Convention, various directives, including Directive 2001/29/EC on the harmonization of certain aspects of copyright and related rights in the information society)

harmonization

Certain aspects of substantive laws on IP rights

were harmonized:

– Patents (European Patent Convention, Regulation 469/2009 concerning the supplementary protection certificate for medicinal products; Regulation 1610/96 on SPC for phyto-pharmaceutical products)

– Plant Variety Rights: Regulation 2100/94 on Community plant variety rights

– TRIPs contains some provisions on the means of enforcing IP rights

Not harmonized

But enforcement was not harmonised in the EU and varied considerably within the EU

For instance :

– Belgium and France had a very efficient procedure for gathering evidence of possible infringement, the other EU countries didn’t

– Germany had a very efficient summary proceeding even in patent cases, whilst summary proceedings in patent cases were in practice very difficult in France and Belgium

– Germany had a system for reimbursement of legal cost, The Netherlands did not

Differences in enformcement

Differences in enforcement:

• weaken the substantial IPRs, and

• Lead to fragmentation of the internal market

• Does not promote free movement of goods

• Does not create an environment conducive to healthy

competition

The cornerstone for Enforcing

IP Rights

Directive 2004/48/EC of the European Parliament and the Council

of 29 April 2004

on the enforcement of Intellectual Property Rights

the Enforcement Directive

Objectives of the Enforcement

Directive

• harmonise the laws on means of enforcing IP rights

• make the system for protecting IPR more efficient

• establish a high level of enforcement across the internal market (which promotes innovation, safeguard employment in Europe and prevent the tax losses resulting from IPR infringement)

• provide legal certainty

• safeguard consumers and users interests

Scope of the Enforcement Directive

• The measures should apply to any infringement of IP rights as provided by Community law and/or national law of the EU country concerned

• Statement of the Commission 2005/295/EC concerning art. 2 of the Enforcement Directive: list IP rights that are covered by the Directive:– Copyright– Neighbouring rights– Sui generis rights of a database maker– Topographies rights– Trademarks– Design rights– Patent rights– Geographical indications– Plant Variety rights

– Trade names (if protected as IP right)


NB Enforcement of Copyright + Neighboring rights where already harmonized.

• Copyright infringement: see also article 8 of the Directive 2001/29/EC

• Computer programs: see Directive 1991/250/EEC

• This Directive shall be without prejudice to provisions of theseDirectives (art 2 sub 2)


• Minimum Harmonization

• Voluntary Provisions

Content of the Enforcement Directive

I. Persons entitled to apply for the measures

II. Evidence

III. Right of information

IV. Provisional and precautionary measures

V. Measures resulting from a decision on the merits

VI. Damages and legal costs

VII. Publicity measures

I. Persons entitled to apply for the measures,

procedures and remedies (art. 4 - 5)

• The holder of the IP right (e.g. the patent holder, the trademark holder…)

REM: copyright and neighbouring rights: presumption of ownership for the person having its name/trademark on the work/subject matter (art 5)

• Other persons authorized (licensees) (if permitted by national law: national law may provide that only exclusive licensees can apply for the measures)

• Professional organisations: recognised intellectual property collective rights-management bodies or recognised professional defence bodies (if permitted by national law)

I. Persons entitled to apply for the

measures, procedures and remedies (art. 4 - 5)

• Art 5

presumption of authorship or Ownership

II. Evidence (art. 6 - 7)

• Purpose : providing right holders effective means of gathering evidence of (possible) infringement (Whereas 20).

• Effective means imply:

a) possibility to force the opposing party to present relevant evidence asked for by claimant (art 6(1))

b) pre-trial measures aimed at preserving evidence, if necessary on an ex parte basis

Model: the French and Belgian « saisie-contrefaçon »(descriptive seizure)

Gathering evidence - 1

• When?– Before the start of proceedings on the merits (art. 7 (1)): the

purpose is indeed to gather evidence of a possible infringement

– Possibility of procedure without the other party having been heard (art. 7(1)) the « surprise effect » : • in particular where any delay is likely to cause irreparable harm to the rightholder or

• where there is a demonstrable risk of evidence being destroyed. the opposing party is not heard for preserving (art 7 (1))


• What?Provisional measures to preserve the evidence, like for instance:

– detailed description of the infringing products/processes/services, including all relevant documents relating to production, origin, channels of distribution of these products (art 7)

– taking samples

– the physical seizure of the infringing products, as well as materials used to produce and distribute them + documents


• Conditions to get such order:

– The applicant is entitled to file an infringement proceeding (IP right holder, exclusive licensee…)

– The claimant presents reasonably available evidence of infringement (or threat of infringement) (art 7)

– The applicant must identify relevant evidence for this claim, which is in possession of the opposing party (art. 6)

– If need be: lodging of adequate security or an equivalent assurance intended to ensure compensation for prejudice suffered by defendant if measures are revoked/lapse or where it is subsequently found that no infringement/threat of infringement (art 7(2))


• Appeal: once measures are executed (= description/seizure has taken place), the defendant may ask for review of the measures (art 7(1))

� measures may be modified, revoked or confirmed

• Action on the merits: to be lodged by claimant within reasonable period set by the court; in absence thereof 20 working days or 31 calendar days, whichever is the longer

If no action on the merits timely filed:

– Measures cease to have effect (upon request of defendant)

– Possibility for defendant to claim damages covering the prejudice suffered due to the measures


• If infringement committed on a commercial scale: the

information can concern banking, financial or commercial

documents

• « on a commercial scale » = « acts carried out on a commercial

scale are those carried out for direct or indirect economic or

commercial advantage » (Whereas 14) � very broad but

exclude acts carried out by end consumers acting in good

• The court may order the presentation of such evidence, subject

to protection of the opposing party’s confidential information

(Whereas 20 and artt. 6+7)

III. Right of information (art.8)

a) Right to obtain information from the infringer

b) Right to obtain information from third parties

a) Right to obtain information

from the infringer

• Which information? - 8(2)Information on the origin and distribution networks, identifyingthird parties involved in the infringement, which can include:

– names and addresses of producers, manufacturers, distributors, suppliers and other previous holders of infringing goods

– names and addresses of intended retailers

– Information on the quantities produced, manufactured, delivered, received or ordered

– Information on prices obtained

• Conditions: - 8(1)– Proceedings on IP right infringement have been lodged

– Justified and proportionate request of claimant

b) Right to obtain information from third parties

• Which information: idem as from infringer

• Conditions: idem as from infringer

• From which third parties? any person who:

– Was found in possession of the infringing goods on a commercial scale (art 8(1)a)

– Was found to be using the infringing services on a commercial scale (art 8(1)b)

– Was found to be providing services used in infringing activities on a commercial scale (banking institutions, energy provided, carrier, storage place…) (art 8(1)c)

REM : « on a commercial scale » = « acts carried out on a commercial scale are those carried out for direct or indirect economic or commercial advantage » (Whereas 14) � very broad but exclude acts carried out by end consumers acting in good faith


(art. 9.1)

• right to preliminary measures (summary proceedings):

– An interlocutory injunction for preventing any imminent infringement

– An interlocutory injunction to forbid the continuation of the alleged infringement (with recurring penalties)

– An interlocutory injunction to make the continuation of the alleged infringement subject to the lodging of a guarantee

– The seizure of the allegedly infringing goods as to prevent their entry into or movement within the channels of commerce

– If infringement on a commercial scale and if claimant demonstrates circumstances likely to endanger recovery of damages: the blocking of the infringer’s assets and bank accounts (art 9.2)


(art.9)

• Conditions:

– reasonably available evidencethat the claimant is the right holderof infringement or imminent infringement (art 9.3)

– If need be: lodging by claimant of a security (art 9.6)

• Action on the merits to be lodged by claimant within a period set by the court; in absence thereof within 20 working days or 31 calendar days, whichever is the longer

If no action on the merits timely filed:

– Measures cease to have effect (upon request of defendant)

– Possibility for defendant to claim compensation for the prejudice suffered due to the measures

V. Measures resulting from a

decision on the merits (art.10)

• measures with regard to infringing goods:– recall from the channels of commerce

– definitive removal from the channels of commerce

– destruction (art 10(1))

– at the expense of the infringer (art 10(2))

• the court must take into account:– the proportionality between the seriousness of the

infringement and the remedies

– the interests of third parties (public health…) (art 10(3))



• measures against the infringer:

• injunction against the infringer aimed at prohibiting the

continuation of the infringement

• recurring penalties

• injunction against intermediaries whose services are

used by a third party to infringe an intellectual

property right



Grant damages to the claimant (art.13):

• If the infringer infringed knowingly, or with reasonable grounds to know: damages appropriate to the actual prejudice suffered by claimant

• When setting the damages, the court has the choice between:

– Taking all aspects of the prejudice into account:

» Negative economic consequences (i.e. lost profits

» Unfair profits made by the infringer

» Moral prejudice

» Costs borne for fighting the infringement



When setting the damages, the court has the choice between:

• Taking all aspects of the prejudice into account:

– negative economic consequences (i.e. lost profits)

– unfair profits made by the infringer

– elements other than economic factors, such as the moral prejudice

• Setting a lump sum on the basis of the royalties which would have been due if the infringer had requested authorisation to use the IP right in question (lost royalties)

VI.Legal costs (art.14)

The reasonable legal costs borne by the successful

party should be reimbursed by the loosing party “unless

equity does not allow this”

various interpretations in the different EU countries. E.g.

– Belgium: legal costs are fixed by Royal Decree and usually

do not cover the real legal costs

– France: the court may allow the reimbursement up to 100%

– The Netherlands: ‘Guidelines’ by the courts that normally do

not cover the real legal costs

VII. Publication of judicial decisions (art.

15)

• at the request of the applicant

• at the expense of the infringer

• appropriate measures for the dissemination of the information

concerning the decision, including displaying the decision and

publishing it in full or in part.

• Optional: Member States may provide for other additional

publicity measures which are appropriate to the particular

circumstances, including prominent advertising.

Questions?

Richard van Oerle

Tel +31 20 7171519

Email: [email protected]

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