Strengthening the Protection and Enforcement of Intellectual Property Rights in Ukraine Activity October 2014

Strengthening the Protection and Enforcement of Intellectual Property Rights in Ukraine Activity October 2014 Customs enforcement of intellectual property rights

3 How to Enforce Intellectual Property Rights? - Border Measures As for border measures, Regulation 608/2013 concerning customs enforcement of IPRs and the Commission Implementing Regulation (EU) No 1352/2013 establishing the forms provided for in Regulation (EU) No 608/2013, have set a special procedure to facilitate the seizure and disposal of IP-infringing products before they enter the channels of commerce within the EU.

4 The main aspects of this procedure are:  Scope. The measures apply to goods protected by trade marks, designs, copyrights and related rights, geographical indications (except traditional specialty guaranteed), patents, and plant variety rights, to topographies of semiconductor products, trade names and utility models, and devices enabling the circumvention of technological measures. Know-how is not included in the scope of the regulation.  Simplified procedure for the destruction of goods; it may be implemented without the intervention of a judge. Every EU Member States have to enable this procedure. How to Enforce Intellectual Property Rights? - Border Measures

5 The main aspects of this procedure are:  Obligation for right holders to provide customs with high quality information.  Powers of custom authorities to detain goods cover also small consignments. A special destruction procedure has been introduced for these small consignments. It does not require the IP owner’s consent or involvement, but the procedure only applies if the IP rights holder requests it in its application. How to Enforce Intellectual Property Rights? - Border Measures

6 How to Enforce Intellectual Property Rights – Border Measures The application for action (AFA) to detain the entrance of suspected counterfeit or pirated goods entails:  Submission of a national or EU application.  Customs decision grant/extend application – period of action.  Enforcement by Customs of all IPRs based on a unique procedure.  Ex-officio procedure possible (no application is necessary).  No administrative cost to pay for applications.

7 How to Enforce Intellectual Property Rights – Border Measures Relevant aspects and conditions:  Who is entitled to submit an application - condition to initiate proceedings.  Ex-officio (only for national applications).  Possibility to add new IPR to existing applications.  Possibility to suspend or revoke applications.  Union database: COPIS  The EU Observatory Enforcement Database.

8 COPIS and links with other databases:  EU customs notices will now be administered through an online database known as COPIS (the anti-Counterfeit and anti-Piracy Information System).  EU Customs access to the OHIM Enforcement Database that includes all trade mark and designs registered in the EU by means of a secured interface. How to Enforce Intellectual Property Rights – Border Measures  Interface with the European Anti- Fraud Information System (AFIS) allows for a possibility of direct transfer of infringements registered in COPIS.

 REGULATION (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 concerning customs enforcement of intellectual property rights (OJ L 181, , p. 15).  Commission Implementing Regulation (EU) No 1352/2013 of 4 December 2013 establishing the forms provided for in Regulation (EU) No 608/2013 of the European Parliament and of the Council concerning customs enforcement of intellectual property rights (OJ L341, , p.10). 9 Legal Framework

 Combating counterfeiting in the EU – implementing TRIPS obligations  Reg. 608/2013 (replacing 1383/2003 from 1 Jan 2014) concerning customs enforcement of IPR  Procedures concerning goods suspected of infringing certain IPR and the measures to be taken against goods found to have infringed such rights Regulation (EU) No 608/

 More infringements, more rights covered  Simplified destruction of goods applicable when holder of the goods and rights holders agree  Specific procedure for small consignments  Further focus on international co-operation and the possibility for sharing of information and data between EU customs and authorities  Union database for applications Reg. (EU) Nº 608/2013 vs. Reg. (EC) Nº 1383/

 Scope of customs intervention (as long as goods are under customs supervision or control)  Customs controls and measures applicable  Exclusions: travellers´ luggage, parallel trade, overruns, goods under end-use regime  Definitions (types of rights, destruction, small consignments, perishable goods) Chapter I – Subject matter, Scope and Definitions 12

 Conditions and procedures for action by the customs authorities where goods suspected of infringing an IPR are subject to customs supervision or customs control within the customs territory of the Union  Goods in the following situations: when declared for release for free circulation, export or re- export when entering or leaving the customs territory of the Union when placed under a suspensive procedure or in a free zone or free warehouse Subject matter and scope (Art.1) 13

 Counterfeit goods (fake trademarks)  Pirated goods (infringing copyright or design right)  Goods infringing a patent, a protection certificate, a plant variety right, a designation of origin or geographical indication  Moulds and matrices for the manufacturing of goods infringing IPR  From 2014: also trade names (if protected under national law), topographies, utility models, technology circumvention devices (art. 2). Which violations are combated ? (Art.2) 14

 Trademarks  Designs  Copyrights or related rights  Geographical indications  Patents  Plant variety rights  Topographies of semiconductors  Utility models  Trade names What rights are covered? (Art.2) 15

 Goods that have been released for free circulation under the end-use regime  Goods of a non- commercial nature contained in travellers’ personal luggage  Illegal parallel trade of legally produced products (goods that have been manufactured with the consent of the right-holder but placed on the market without his consent)  Overruns (goods manufactured by licensed producer in excess of the quantity agreed with the right holder) What falls out of the scope? (Art.1) 16

 Goods bearing without authorisation a sign which is identical to the trade mark validly registered in respect of the same type of goods, or which cannot be distinguished in its essential aspects from such a trade mark  Goods bearing, or described by, a name or term protected in respect of a geographical indication  Any packaging, label, brochure, or other similar item, which includes a sign, name or term which is identical to a validly registered trade mark or protected geographical indication, or which cannot be distinguished in its essential aspects from them, and which can be used for the same type of goods as that for which the trade mark or geographical indication has been registered Definitions (Art.2) - Counterfeit goods - 17

 Goods which are the subject of an act infringing a copyright or related right or a design in the Member State where the goods are found and which are, or contain, copies made without the consent of the holder of a copyright or related right or a design Definitions (Art.2) - Pirated goods - 18

 Goods with regard to which there are reasonable indications that, in the Member State where they are found, they are:  the subject of an act infringing an IPR in that Member State  devices or products produced or adapted for facilitating the circumvention of any technology that prevents or restricts acts which relate to an act infringing any copyright in that Member State  moulds or matrices for the manufacturing of goods infringing intellectual property rights Definitions (Art.2) - Goods suspected of infringing an intellectual property right - 19

 Submission of an application – national or Union (Art.5)  Processing of applications (Art.7) – high quality information needed (Art.6), especially regarding the IPR to be enforced the authentic goods (customs authorities should be able to identify them!)  Customs decision granting or rejecting applications (Art.10) – period of action shall not exceed one year (begins on the day the decision granting the application takes effect) (Art.11)  Possible to extend the period during which the customs authorities are to take action (maximun one year) (Art.12) Chapter II – Applications for action 20

Application requesting that customs authorities take action with respect to goods suspected of infringing an IPR (Art.6) 21

Request for extension of the period during which the customs authorities are to take action (Art.12) 22

Chapter II – Applications for action 23  Who is entitled to submit an application / initiate proceedings? (Art.3)  right-holders  intellectual property collective rights management bodies / professional defence bodies  persons or entities authorised to use IPR, which have been authorised formally by the right-holder to initiate proceedings in order to determine whether the IPR has been infringed  Customs decisions within time limits: 30 days from reception (Art.9)  Possibility to suspend or revoke the application in case of failure of the holder of the decision to fulfil his obligations (Art. 16)

Chapter II – Applications for action 24  Obligations for the holder of decision:  keep information up-to-date: (Art.15) IPR covered by the application ceases to have effect the holder of the decision ceases for other reasons to be entitled to submit the application  assume liability - the right holder shall be liable towards any holder of the goods or declarant, who has suffered any damage (Art.28)  undertaking to bear costs - right holder has to pay the costs incurred by customs and can claim compensation from the infringer (art.29)  request for small consigment procedure (art.26)

Chapter III – Action by customs 25  Suspension of release or detention of goods suspected of infringing an IPR upon application (following the grant of an application) (Art.17) ex-officio (before the grant of an application) (Art.18)  Notification to parties by customs:  Right holder  Declarant or holder of the goods  Timeline: within one working day of the suspension or detention  Inspection and sampling of counterfeit and pirated goods (Art.19)  Permitted use of certain information by the right holder (Art.21)

 Goods suspected of infringing an IPR may be destroyed under customs control, without any need to determine whether an IPR has been infringed  All of the following conditions must be fulfilled  right-holder has confirmed within 10 working days that the goods are infringing an IPR  right-holder has confirmed within 10 working days his agreement to the destruction of the goods  declarant or holder of the goods has confirmed within 10 working days his agreement to the destruction of the goods (or implied consent for the destruction) Simplified destruction procedure (Art.23) 26

 Definition: a postal or express courier consignement which contains 3 units or less or has a gross weight of less than 2 kilograms  All of the following conditions must be fulfilled  only counterfeit and pirated goods  non perishable  goods covered by a decision granting an application  procedure requested by applicant  Legal proceedings not necessary for destruction of small quantities (eg. online purchases sent by post) Specific procedure for small consignements (Art.26) 27

Chapter IV – Liability, costs and penalties 28  Liability of the customs authorities (Art.27)  holder of the decision is not entitled to compensation in the event that goods suspected of infringing an IPR are not detected by a customs office and are released, or no action is taken to detain them  Liability of the holder of the decision (Art.28)  Holder of the decision shall be liable towards any holder of the goods or declarant, who has suffered any damage in the event of act or omission on the part of the holder of the decision suspends the procedure samples taken are not returned or are damaged goods are found not to infringe an IPR

Chapter IV – Liability, costs and penalties 29  Costs (Art.29)  if requested by the customs authorities, the holder of the decision shall reimburse the costs incurred by the customs authorities including storage, handling and destruction of the goods  right holder can also claim compensation from the infringer  Penalties (Art.30)  Member States shall lay down provisions establishing penalties in order to ensure that the holders of decisions comply with the obligations  penalties shall be effective, proportionate and dissuasive

Chapter V – Exchange of information 30  Central database in electronic form (Art.31)  information on applications  information on goods (quantity and type, value, IPR, customs procedures, countries of provenance, origin and destination, transport routes and means)  accessed by customs authorities of the Member States and the Commission  each custom authority is responsible for the accuracy, adequacy and relevancy of the introduced information

31 Some Custom Figures - Year 2013  Number of AFAs reached  Cases doubled since  Domestic retail value nearly 1 billion €.  Internet sales boost detention in postal traffic: 61% of the cases.  Sea transports remain main transport method: 58% of the articles. Source: European Commission's Taxation and Customs Union Directorate-General (

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