Stellungnahme zur geplanten Revision der Antipiraterieverordnung (Referent Christian Schumacher)
Dear Mrs. Hecko, dear ladies and gentleman!
1. Scope of the Regulation: situations in which customs authorities should be competent to take action
For counterfeited or pirated goods it should not be relevant where the ultimate destination of goods is stated. It would be appreciated if such goods could be detained merely due to the fact that they are counterfeit/pirated, regardless of whether potential commercial use is in or outside of the concerned member state/the EU.
In Article 2 (1) (1) (a) „Counterfeit goods“ should be defined independently on the basis of the current definition. Yet the wording currently could lead to the conclusion that (potential) commercial use within the EU could be a condition for detention and subsequent destruction of such goods. An adaptation would also seem to be in line with Subparagraph (b) where no actual infringing act within the EU is required but the that “the making of those copies would constitute an infringement” under EU or national law.
2. Scope of the Regulation: range of IPRs the Regulation should cover and possible derogations
There is no reason for limiting the range of IPR that could be basis of a border seizure application, if existence and ownership of these rights are shown.
3. Scope of the Regulation: possible derogations for which customs authorities will not be competent to take action in the light of the Regulation
3.1. Travellers' personal baggage:
The mere fact that goods are imported as part of travellers’ personal baggage cannot lead to the conclusion that their importation does not happen in the course of trade and thus IPR infringement could be excluded. Hence, goods imported via travellers’ personal baggage in principle shall be covered by the Regulation. Only where the customs authorities in a particular case due to the overall circumstances can exclude that the traveller acted in the course of trade, the goods shall not be detained.
3.2. Parallel trade and "overruns"
Parallel imports and "overruns" infringe the right holders’ rights. In many cases they hardly can be distinguished from counterfeits. Thus, customs authorities tend to stop goods being imported via specific distribution channels (i.e. specific countries of origin), which leads to situations where customs authorities may also stop parallel imports or "overruns". However, if such goods will be stopped, the right holders are not in a position to confirm that the goods are “counterfeit”. Hence, in such a situation a simplified procedure would not be applicable even if the importer would be willing to consent to the destruction of the goods according to the simplified procedure.
4. Simplified procedure enabling customs authorities to have infringing goods abandoned for destruction under customs control, without there being any need to determine whether an IPR has been infringed
The currently optional simplified procedure shall be made compulsory for all Member States. In Austria, where the simplified procedure is in place, the system is working very well. It seems that only in very few cases the addressees object the detention. In the vast majority of the cases this leads to a routinehandling of the case on customs' and right holders' sides on a reasonable-costs basis.
5. Small consignments
A standard simplified procedure for the growing number of small consignments without involvement of the right holders is not appreciated. The right holder shall have the possibility to consent to the release of e.g. original and lawfully imported goods, even if the addressee/importer does not expressly contest the seizure according to the simplified procedure. Further, according to the current simplified procedure, right holders are entitled to request valuable information from customs relating to the persons involved in the import. If right holders are no more involved in the seizure of small consignments, they would lose the opportunity to use such information to adapt their anti-counterfeiting strategy according to the actual circumstances (i.e. focussing anti piracy measurements on specific distribution channels or specific senders).
6. Costs of storage and destruction
The Austrian Association for the Protection of Intellectual Property and Copyright has not yet been confronted with concerns about the current situation.
7. Other issues
7.1. Trademark/patent renewals
According to established customs practice the time period during which the customs authorities are to take action (in general: 1 year) will only be granted until the next renewal date of a registered IP right covered by the application, if such right is due for renewal within the next year. This is specifically problematic in cases where e.g. several trademarks are covered by a single application as there is a high chance that one of the trademarks will be due for renewal within the next 12 months. In this respect it has to be noted that trademarks can often only be renewed 6 months before the renewal is due. Further, a renewal still can be carried out within a 6-months-grace-period from the date the renewal was due.
This leads to a situation where the trademark owner is often not yet in a position to request renewal of his trademark registration and therefore the period of the requested border seizure will be shortened by customs. Further, even if the request for extension falls into the 6-months-pre-renewal-period, the trademark owner would be forced to renew his trademark already before the renewal date (and prove to customs that he already requested renewal).
Such shortening of the period unnecessarily increases the number of requests for extension of the customs period to be filed by the right holders and administered by the customs authorities and leads to avoidable costs on customs’ and right holders’ sides.
In this respect it has to be noted that a trademark registration anyway (voluntarily or upon a justified request of a third party) could be cancelled at any time. The trademark owner anyway is required to notify to the competent customs department, if his right ceases to be validly registered and thus there should be no need to specifically refer to “next renewal dates” when deciding on a request for extension of the customs period.
This problem is even more critical in the case of patents which have to be renewed on a yearly basis.
7.2. EU-wide applications
E.g. the German authorities require further formalities such as requesting the right holder to enter further data separately in a national customs online system. This applies also where EU-wide customs applications are filed. Should further Member States also require similar formalities in the future, this would lead to further costs on the right holders’ side as they have to instruct their local representatives in each Member State to comply with the requirements of the local authorities. Thus, an EU-wide “onestop-shop” system for entering such data would be highly appreciated.
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