In context

New Anti-Piracy Regulation offers more protection for IP right holders

January 13, 2014
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In context

The new Anti-Piracy Regulation regulates the enforcement of IP rights by customs authorities as from 1 January 2014. Its scope has been broadened and the Regulation now relates to practically all possible IP rights. Procedural changes also occurred, for example, in relation to sampling of goods.

On the basis of the Anti-Piracy Regulation (APR), customs authorities in the Netherlands and other EU countries can prevent counterfeit goods and other goods where IP rights are infringed from being imported into or exported from the EU market. A new version of the APR (no. 608/2013) entered into force on 1 January 2014, with the following major changes. 

 

Extended scope

The new APR provides protection for trade names, topographies of semiconductor products (chips), utility models and the future unitary patents. The APR thus relates to practically all possible IP rights. The APR furthermore creates the possibility to act against devices for the circumventing of technological measures (e.g. anti copying measures or bar codes). Parallel trade, overruns and non-commercial goods carried by passengers in their luggage remain excluded from the scope of the APR. The new APR, moreover, seems to explicate that custom authorities can only suspend releasing goods when they suspect, on the basis of reasonable indications, that these goods are the subject of an act infringing an intellectual property right in that member state. When there is no (corresponding) IP right in the Netherlands, customs authorities in Rotterdam may not suspend the release of these goods on the basis of the APR.

 

Stricter rules for applicants

The new APR contains stricter rules for applicants for customs action and farther-reaching sanctions in the case of non-compliance. Customs authorities are, for example, obliged to reject an incomplete application if the applicant does not timely (within ten working days) supplement it. The customs authorities are furthermore authorised to revoke their decisions or suspend their actions (depending on the case) if the IP right holder does not meet certain obligations, e.g. obligations to provide information and to compensate certain costs.

 

Destruction of goods

The old APR allowed EU member states to offer a simplified procedure for the destruction of “infringing goods”. Several member states, including the Netherlands, already made use of this possibility. The new APR transforms this possibility into an obligation. This amendment is therefore mainly of interest in EU-wide applications. The APR also includes an entirely new procedure for the destruction of goods in small consignments, e.g. for small amounts of goods ordered online.

 

Destruction may take place without judicial interference if the declarant / holder of the goods has agreed to the destruction or has not reacted in a timely manner (within ten working days). In the ‘regular’ destruction procedure, destruction only occurs at the request of the IP right holder. Destruction of small consignments may be initiated by customs authorities without involving the IP right holder at all. 

 

Sampling

Like the old APR, the new APR provides that customs authorities may provide the IP right holder with samples for the purposes of analysis. The old APR required that this should take place “according to the rules in force in the Member State concerned”. This condition has now been removed. This possibly broadens the scope of the provision, because of the exclusion of judicial interference.

 

It seems, however, that samples may only be provided for analysis of infringement of specific IP rights, like trademark rights, copyrights and design rights. This does not include patent rights and plant variety rights. IP right holders did retain, however, the right to “inspect” goods which are detained by customs authorities, irrespective of the nature of the IP right involved. The APR does not substantiate which acts “to inspect” would exactly cover.

 

Burden of proof with regard to goods in transit

If “infringing goods” are in transit in the EU (i.e. transported from a country outside the EU and destined for another country outside the EU) the APR does not apply. It only applies if the IP right holder is able to prove that the goods are actually destined for the EU. In practice it is difficult to meet that burden of proof. The new APR was generally expected to include a lighter burden of proof for the IP right holder or a reversal of the burden of proof. The new APR, however, does not meet this expectation. 

 

Conclusion

The new APR will further protect IP right holders with its broader scope and practical instruments (destruction) to protect IP rights. On the other hand, stricter rules and sanctions apply to applicants. Moreover, the required suspicion that the infringement took place in the Member State where the goods are suspended is a significant limitation. The possibility to take samples seems to have been both broadened and limited at the same time. As regards goods in transit, the situation remains unchanged.

 

This new APR emphasises once more the importance of holding IP rights in the Netherlands . On the basis of the APR the customs authorities may, after all, only act against importation and exportation at the outer borders of Europe and only on the basis of IP rights which are valid in that particular member state. As the Netherlands is the main logistic gateway to Europe and the Dutch customs authorities are known for their proactive attitude, holding Dutch patent and other IP rights may be an important weapon for enforcement throughout Europe.

 

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