eu border measure regulation

www.newmorningip.com +353 1 254 2340

EU Border Measures and ACTADecember 2012

Summary

• Overview• Background• Law• Procedure• Scenarios• Relevance to Practitioners• Controversies• Proposals for Reform• A word on ACTA• Q&A

About Us

• Specialist IP company• Advise on all legal and operational aspects of

intellectual property and strategy• Outsourced IP service

– Local SME– Foreign Direct Investment

Fred Logue IP Solicitor PhD Physics, 1996 Trinity College Dublin Member of Irish and UK Law Societies, World leading IP strategist IAM300 Member of the Institute of Physics

Introduction

• Border Measure Regulation (BMR) is an important tool for the IP strategist advising global companies

• Procedures for customs authorities relating to goods suspected of infringing certain intellectual property rights

• Normally to facilitate infringement proceedings• Goods imported or exported or transiting EU

customs area• Supply chain consequences

Once upon a time in Monaghan

Supply Chain

• Outsourcing• Global supply chain• Clash with territoriality of IP rights• Clash with international trade agreements• Extremely relevant for Irish companies, e.g.

– Consumer goods– Generic pharma (including precursors)

Law• Article 207 TFEU

– Common commercial policy– Commercial aspects of IP– EU has exclusive competence under A3(1)(e)

• Customs Regulation 2913/92• Border Measure Regulation 1383/2003EC• Implementing Regulation 1891/2004• Manual for Applications for Customs Action• Irish SI 344/2005• Joined Cases C-446/09 and C-495/09 (Philips/Nokia)• India and Brazil WTO complaints• New guidelines on goods in transit• Proposed new BMR• TRIPS• GATT

Strategy

• Understand your supply chain• Identify points of import/export/transit in EU Customs area• Strategic use of various national and community rights• Risk analysis for potential infringements• Surveillance program for potential infringers• Preparation for action or reaction

– Forms/contacts– Proofs– IP right coverage of goods

• Readiness to initiate or defend judicial procedures• Readiness to walk away from a shipment?

Customs Procedures

• Which rights• Where to apply• How to apply• What will customs do?• When to apply• Who to apply to

Counterfeit GoodsUnauthorised TM use

Pirated Goods

– Copies made without consent of copyright or design right holder

Infringement

• Patent• Supplementary Protection Certificate• Plant variety right (national or community)• DO and GI (national or community)• Geographical designation (community)

IP Right National Rights Community Rights

Registered Trade Mark

Unregistered Trade Mark

Copyright + Related Rights

Registered Design

Unregistered Design

Sui generis Database

Patent

Utility Model

SPC (medicines and plants)

Geographical Indication

Designation of origin

Geographical Designation

Plant Variety Right

Semiconductor Topography

Irish Law

• Regulation is directly effective• SI 244/2005 is implementing regulation• Designates Revenue as competent customs authority• Offences

– False or misleading details in an application– False declaration– Aiding and abetting– Summary offence up to €5,000 fine– Personal and corporate criminal liability– Probation Act does not apply

Goods in Transit• Are they put on the market• Manufacturing fiction• Over ruled in Philips/Nokia• Challenged by India and Brazil before WTO• New guidelines on goods in transit• Mere placing under customs control not infringement• Must be a “commercial act” directed at the European market

– Sale or offer– Advertising– Apparent from documents incl. Instruction manuals– Risk of fraudulent diversion– Destination not provided where it is required– Lack of identity where it is required

Infringement

• Infringement under law of Member State in which the application for customs action is made– Note copyright law is quite fragmented

• Understand what the infringement is and whether or not there are any local law issues

• UK, NL, DE etc

Procedure

• RTFM!– http://

ec.europa.eu/taxation_customs/resources/documents/customs/customs_controls/counterfeit_piracy/right_holders/manual_en.pdf

• Use the forms• Who

– Rights Holder– Licensee– Representative of above

• Customs can act ex-oficio (i.e. off their own bat)• Application can be made with effect lasting up to a year• No need for actual knowledge of infringement

– Can be used if suspicion– General surveillance

• No Fee but applicant pays for translations• Can be renewed with 30 day processing time• No procedure for automatic extensions• Two procedures

– National covers one member state and a national right– Community can cover multiple member states but limited to

community rights

• Mandatory information – Proof of right

• Certificate or other

– And if licensee or representative• License• Letter of authority/proxy

– Technical information concerning goods– Any specific information concerning type or pattern of fraud– Name and address of contact person appointed by right-holder– Article 6 declaration– For Community Applications also name and address of right holder

in each of the member states concerned– Other information

Practical Tip

• Tell customs what a regular shipment looks like and what an irregular shipment should look like.

Article 6 Declaration

• 30 Working days to make a decision• Duty to notify customs if

– rights cease to be valid – No longer enforceable by right holder– Change in contact information– New information– Withdrawal

If a shipment is discovered

• Customs may detain or suspend release• Inform

– Customs office that processed application– Right holder– Holder of the goods

• Names and address of consignor etc• Samples• Note obligations on use of information

Procedure after detention

• Simplified procedure where there is a settlement

• 10 working days to initiate proceedings– Max 10 day extension– Shorter period, no extension for perishable goods

• For certain rights goods may be released pending litigation once security is provided by owner or related party

www.newmorningip.com +353 1 254 2340 26

Statistics

• Class International– Aquafresh

• Montex– Diesel

• Philips– Electric shavers intercepted at Antwerp port– Detained

• Nokia– Nokia phones and accessories intercepted at Heathrow– Released applying Montex

Manufacturing Fiction

Resources

• DG Customs and Tax• Revenue Commissioners• Case Law• Irish Law

http://www.revenue.ie/en/customs/leaflets/counterfeit-pirated-goods.html

Proposed New BMR

• Part of Strategy on IPR and Single Market Act• New rights

– Trade Name– Semiconductor Topography– Utility model– Parallel trade (by removing current Article 3)– Circumvention of technical measures

• Simplified procedure– “where it is clear that the goods are counterfeit or pirated”– Small postal e-commerce transactions– No right holder involvement and customs pays for destruction– Recipient is not sanctioned

• Traders’ rights and Charter of Fundamental Rights– Timelines– Information release– Destruction procedures for cases other than

counterfeiting and piracy• Broadens who can act including collecting

societies and professional defence bodies

Issues

• BMR as a detention procedure versus customs becoming enforcers

• Complexity of investigating infringement• Creation of new IP rights in particular for transit

and parallel trade• Due process issues• Free trade and supply of medicines into countries

where no rights exist (usually poor countries)• Balance with harm caused by infringements

• Anti Counterfeiting Trade Agreement• ACTA is an international trade agreement that will

help countries work together to tackle more effectively large-scale Intellectual Property Rights violations. Citizens will benefit from ACTA because it will help protect Europe's raw material – innovations and ideas.

• Sets international standards for IPR enforcement and allows for information exchange and other cooperation

When you are explaining you are losing

• ACTA does not– Monitor the Internet– Change EU law– Favour industry over fundamental rights– Prevent online sharing of content– Poor countries from buying cheap medicines

51Rejected by resounding majority in the European Parliament July 2012

Current Status - EU• Commission asks ECJ to clarify whether ACTA is incompatible - in

any way - with the EU's fundamental rights and freedoms – such as freedom of expression and information or data protection. The European Commission is convinced that ACTA is fully in line with the EU's high standards and does not interfere in citizen's fundamental rights of freedom of expression and data protection.

• Commission wants to provide the European citizens, the National Parliaments and the European Parliament with the most detailed and accurate information possible, and therefore looks forward to receiving an independent opinion of Europe's highest court. In this way the debate will again be based upon facts and not upon misinformation or rumours.

Current Status Worldwide

Comes into force in ratifying countries once 6 countries have ratified

fred.logue@newmorningip.com +353 (0)1 254 2340 l www.newmorningip.com l @newmorningip

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