Cabinet Beau de Loménie
The regulation of the European Parliament and of the Council n°608/2013/EU of 12th June 2013 governing anti-counterfeiting action by customs authorities was published on 29th June 2013 (JOEU 29th June, n° L 181), repealing the regulation n°1383/2003/EC.
This new regulation, which will apply from 1st January 2014, strengthens the role of customs authorities in the interception and the destruction of counterfeit goods entering, or in transit through, European Union territory.
Like the prior regulation, regulation n°608/2013 deals only with the procedural rules for the customs authorities and contains no rules relating to criteria for ascertaining the existence of an infringement of an intellectual property right (recital 10).
Its scope is enlarged and will henceforth include trade names when they are protected under national law, and topographies of semiconductor products as well as utility models and devices which are primarily designed, produced or adapted for the purpose of enabling or facilitating the circumvention of technical measures (article 2).
Its scope also includes the monitoring of small consignments, due to the growing number of counterfeit goods sent by postal service (article 26).
However, as announced during the debate on the review of regulation n°1383/2003/EC, non-commercial goods carried by passengers in their personal luggage are not targeted. The exclusion also applies to goods that are manufactured by a person who is duly authorized by a right-holder but are produced in surplus quantity.
Under this new regulation, under certain conditions the seized goods may be destroyed under the control of the customs authorities “without there being any need to determine whether an intellectual property right has been infringed under the law of the Member State where the goods are found”. When the requirements specified in by the text are fulfilled, the destruction may be implemented without the intervention of a judge (article 23).
This so-called “simplified” procedure is no longer optional and enables the applicable regime to be unified for all members states of the Union.
Furthermore, the new regulation specifies expressly the factors which must accompany the application for customs intervention, to be submitted to the customs authorities. In this respect, the regulation henceforth requires the applicant to communicate specific technical data on the authentic goods (bar-codes, images…), as well as information relevant to the customs authorities’ analysis and assessment of the risk of infringement of the intellectual property right concerned (authorized distributors…).
Finally, contrary to what was expected during the inaugural conference of the exhibition “Contrefaçon, sans façon” held on the 29th January 2013, the new regulation does not modify the solution set out by the Nokia-Philips case law relating to counterfeit goods in transit coming from third- party countries into the European Union and intended for another third-party country (ECJ, 1st dec. 2011, aff. C-446/09 and C-495/09, Koninklijke Philips Electronics NV c/ Lucheng Meijing Industrial Company Ltd et a. et Nokia Corporation c/ Her Majesty’s Commissioners of Revenue and Customs).
In this decision, the Court of Justice had decided that the goods, prima facie not intended for introduction into Union territory, could nevertheless be seized by the customs authorities, if they had convincing evidence or strong clues of marketing of goods in the Union territory, which is evidence that is very difficult to provide.
The issue of goods in transit will be regulated by forthcoming texts modifying Regulation n°207/2009 on the Community trademark, which will soon be debated before the European Parliament. The French customs authorities, who have ceased to intervene against allegedly infringing goods in transit or in transshipment, will thus have to await the adoption of these forthcoming texts.
In Brief: By a decision of 22th May 2013, the French Council of State accorded topublic servants who have participated in the creation of software the right to an incentive payment related to the results of the use of this software.