EUROPEAN PERSPECTIVES

Three Stripes and Your (Name is) Out

Council Regulation (EC) 3295/94 (as amended by Council Regulation 241/99) allows the owners of EU intellectual property rights to arrange the seizure of counterfeit or pirated goods by the customs authorities of EU member states.

Under the Regulation, the owner of an intellectual property right (IPR), including a national trade mark right or a CTM, applies to the appropriate customs authority setting out

• Proof of his right,

• The nature of the suspected counterfeit goods, and

• The period during which the authority is requested to take action.

 

Once suspected goods have been identified and detained by the customs authority (either on the basis of the IPR owner’s application or as a result of the authority’s own suspicions), and have subsequently been confirmed as counterfeit, the IPR owner is given a short period in which to bring an infringement action against the counterfeiter or pirate before the appropriate tribunal. During that short period the counterfeit goods are detained by the customs authority. However, if no appropriate action is taken by the IPR owner during the period allowed, then the goods are released.

In order to facilitate action being taken by the IPR owner, Article 6(1) of the Regulation provides that:

“...In accordance with national provisions on the protection of personal data, commercial and industrial secrecy and professional and administrative confidentiality, the customs office or the service which dealt with the application shall notify the holder of the right, at his request, of the name and address of the declarant and, if known, of those of the consignee so as to enable the holder of the right to ask the competent authorities to take a substantive decision...”

 

In other words, the customs authority should, if requested, provide the IPR owner with details of the company (or individual) importing the counterfeit goods and also the company (or individual) to whom the goods were to be delivered, to enable the IPR owner to bring appropriate legal action. This information is to be given to the IPR owner in accordance with the appropriate national provisions on secrecy and confidentiality (personal, commercial, industrial, professional and administrative).

In a recent ECJ judgement (In re Adidas AG), the operation of Article 6(1) at a practical level was considered. The facts were these. The Swedish Customs Office in Stockholm had detained a consignment of footwear bearing the registered trade mark Adidas. A representative of Adidas’ Swedish subsidiary confirmed the counterfeit nature of the goods and Adidas AG therefore lodged an application that they be detained for a further period to allow them (Adidas) to bring a trade mark infringement action. This application was granted on 17 February 1998, which meant that the counterfeit footwear could be detained until 17 March 1998.

Once the application had been granted, Adidas requested information about the Swedish consignees of the detained goods. The Customs Office refused to disclose the details requested, however, since they maintained that to do so would be contrary to the Swedish law on the protection of confidential information. Under that law the principle of confidentiality applies to information concerning an individual’s personal or financial circumstances obtained in the course of customs control.

Adidas appealed against this refusal to the Swedish Court. The Court agreed with the position of the Customs Office but decided to stay proceedings and to refer the following question to the ECJ:

“Does Council Regulation (EC) No. 3295/94 constitute a bar to application of rules of national law under which the identity of declarants or consignees of imported goods, which the trade mark owner has found to be counterfeit, may not be disclosed to the trade mark owner?”

The ECJ found that a rule of national law, such as the Swedish law on the protection of confidential information, could not prevent the disclosure of the details such as those requested by Adidas. The Court noted that the effective application of the Regulation is directly dependent on the information supplied to the owner of the IPR right. It followed that if the identity of the declarant and/or the consignee of the counterfeit goods was not disclosed to the IPR owner, it would, in practice, be impossible for him to bring the legal action required.

The ECJ noted further that there are a number of provisions in Council Regulation (EC) No. 3295/94 that are designed to safeguard the interests of a named declarant and/or consignee. Under the Regulation,

• The declarant/consignee is entitled to have the detained goods released (or their detention revoked) against provision of security.

• The IPR owner may only use the information disclosed by the customs office for the purposes of bringing a legal action. If the information is used for any other purpose, the IPR owner may incur liability under the civil law of the relevant member state.

• The IPR owner may be required to provide security under Article 3(6) of the Regulation, thus facilitating the reparation of any damage caused to the declarant and/or consignee by the IPR owner’s misuse of the information received.

 

Comment

This is a sensible decision that will assist IPR owners in their fight against counterfeiting.

Council Regulation (EC) No. 3295/94 has recently been amended to cover

• Counterfeit goods which infringe a patent or a supplementary protection certificate (in addition to those previously covered which infringe a trade mark registration, a design registration or copyright), and

• Goods in transit (i.e. those placed in a free zone or free warehouse).

 

The amended Regulation also introduces a provision for a single application procedure, covering a number of EU member states, that is exclusively available to CTM owners.

The more weaponry that is placed in the hands of legitimate businesses to fight the scourge of counterfeiting and the criminals associated with that activity, the better.