Spain - aippi

100
Question Q208
National Group:
Spanish Group AIPPI
Title:
Border Measures and other Measures of Customs Intervention
against Infringers
Contributors:
David Pellisé (President), Christian Duran, José Ramón
Fernández-Castellanos, Isabel Ferrero and Isabel de Prada
(PHILIPS), Jordi Güell, Ricardo Guerras, Iván Herce, Alejandro
Sanz-Bermell, Lluís Torrents, Antonio Velázquez, Eduardo Zamora
Date:
28 February 2009
Questions
I.
Analysis of current law and case law
The Groups are invited to answer the following questions under their national laws:
1. Do the laws of your country provide for border measures? If so, what is the legal
basis?
Yes, in our country there are legal provisions concerning the intervention of customs
authorities against goods suspected to infringe intellectual property rights.
The legal basis is a European Regulation drafted according to Article 133 of the Treaty
establishing the European Community, which states that the European Union is competent in
border measures.
The main legal text regarding this issue is Regulation (EC) No. 1383/2003, of 22 July 2003,
concerning customs action against goods suspected of infringing certain intellectual property
rights and the measures to be taken against goods found to have infringed such rights
(Official Journal L 196, 02.08.2003).
This Regulation replaces Customs Regulation (EC) No. 3295/94, of 22 December 1994
which, at the same time, replaced the 1986 Community Customs Code. Both legal texts were
aimed at establish measures in order to prohibit the release for free circulation, export, reexport or entry of counterfeit and pirated goods.
The EC Regulation No. 1383/2003 currently in force is in compliance with the requirements
concerning this issue resulting from the 1994 Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS).
EC Regulation 1383/03 sets out the conditions for action by the customs authorities when
goods are suspected of infringing an intellectual property right in any of the following
situations:
(a) when they are entered for release for free circulation, export or re-export
(b) when they are found during checks on goods entering or leaving the Community customs
territory, in the process of being re-exported subject to notification or placed in a free
zone or free warehouse.
1
The definition of the above concepts can be found in EC Regulation No. 2913/92 of 12
October 1992 establishing the Community Customs Code (OJ L 302, 19.10.1992) and in the
subsequent EC Regulation No. 450/2008, of the European Parliament and the Council, of 23
April 2008 (OJ L 145, 4.6.2008)].
EC Regulation No. 1383/2003, also known as "the basic Regulation", has been developed
by:
-
EC Regulation No 1891/2004 of 21 October 2004 laying down provisions for the
implementation of Council Regulation (EC) No 1383/2003 (OJ L 328, 30.10.2004)
EC Regulation No 1172/2007 of 5 October 2007 partially amending EC Regulation No.
1891/2004 (OJ L 261, 6.10.2007).
In order to better ensure a harmonised approach to the Basic Regulation (1383/2003) and its
Implementing Regulation (1891/2004), the European Commission has drafted a Manual,
whose title in English is Manual for Lodging of Applications for Customs Action. The
European Commission is currently preparing a translation of this manual into Spanish and
the rest of official languages of the EU.
With regard to Spanish legal provisions, we must point out the existence of Order
EHA/2343/2006, of 3 July 2006, concerning the intervention of customs authorities in
declaring that goods are suspected to infringe intellectual property rights (Spanish Official
Gazette 19.7.2006).
This Order deals with certain aspects of the EU Regulations in order to allow their better
understanding by Spanish citizens and authorities.
The most remarkable aspect of this Order is that it implements Article 11 of the Basic
Regulation No. 1383/2003 concerning the simplified procedure for destroying goods
suspected to infringe an intellectual property right.
Finally, it is worth mentioning that the European Court of Justice has interpreted certain
aspects of the EU Regulations relating to customs action against goods suspected to infringe
intellectual property rights. The most relevant judgments are ECJ Judgments of 6 April 2000
(Case C-383/98, The Polo Lauren Company), 23 October 2003 (Case C-115/02, Rioglass), 9
November 2006 (Case C-281/05, Montex v. Diesel) and 12 February 2009 (Case C-93/08,
Schenker).
2. Do the laws of your country provide for other measures of customs intervention
against infringers? If so, which ones and what is the legal basis?
Apart from the legal provisions contained in the basic Regulation, there are no legal
provisions applicable in Spain that deal with other measures of customs intervention against
infringers.
3. Are border measures and other measures of customs intervention against
(collectively referred to as “border measures”) only available for pirated copyright
and counterfeit trademark goods or also for goods infringing other IP rights? If so,
for which types of IP rights are border measures available? Are border measures
in particular available for goods infringing patents, plant variety rights, common
law marks, unregistered design rights, or geographic indications?
2
The basic Regulation (No. 1383/2003/EC) extends the existing scope for intervention of
customs authorities according to Regulation No. 3295/1994/EC. Article 2 of the basic
Regulation currently in force, states that border measures are applicable not only to goods
infringing registered trademarks and copyrights but also to other intellectual property rights.
More precisely, border measures are applicable to any of the following intellectual property
rights:
-
registered trademarks
copyrights
rights related to copyrights
designs rights, regardless of whether they are registered or not
patents
supplementary protection certificates of health products and medicaments
designations of origin
geographic indications
plant variety rights
Additionally, paragraph 3 of Article 2 of the Basic regulation considers that any mould or
matrix which is specifically designed or adapted for the manufacture of goods infringing an
intellectual property right shall be treated as goods of that kind if the use of such moulds or
matrices infringes the right-holder's rights.
Is actual registration of the IP rights required or is an application to register
sufficient?
In order to request intervention of the customs authorities, we must differentiate two cases,
depending on the type of intellectual property right invoked (Article 2 of the EC Implementing
Regulation No. 1891/2004):
-
in the case of a right that is registered or for which an application has been lodged, the
proof required is proof of registration with the relevant office or proof that the application
has been lodged. A database extract of a national or international office is considered
sufficient. In case of protected designations of origin and protected geographic
indications, it is also necessary to submit evidence that the holder of the right is the
producer or the group as well as evidence that the designation or indication has been
registered.
-
in case of copyrights, related rights or design rights which are not registered or for which
an application has not been lodged, any evidence of authorship or of the applicant's
status as original holder shall be sufficient.
Does unfair competition, passing off or the like give rise to border measures?
The basic Regulation (No. 1383/2003) and implementing regulations do not foresee such
possibility. This means that the Spanish customs authorities cannot intervene on the basis of
such Regulations against goods contrary to unfair competition rules or for similar reasons.
Despite the above, the customs authorities may eventually be compelled by a judicial order
to take intervention at customs against goods which are against the rules of unfair
competition, by virtue of Spanish Law 3/1991 of Unfair Competition. In other words, the
Spanish courts may issue an order following a request for a preliminary injunction or the
enforcement of a judgment that will oblige the customs authorities to intervene certain goods
that are contrary to the rules on unfair competition.
3
4. Are border measures available for parallel imported goods?
The Community regulations on border measures is not applicable to parallel imports. In fact,
the Basic Regulation No. 1383/2003 expressly states that the Regulation shall not apply to
goods bearing an intellectual property right with the consent of the holder of that right and
which have been manufactured with the consent of the right-holder but are entered for
release for free circulation, export or re-export, in the process of being re-exported subject to
notification or placed in a free zone or free warehouse (Art. 3.1)
Regardless of the fact that parallel imports are explicitly excluded from the Basic Regulation,
parallel imports may be pursued by other means. Indeed, the owner of the intellectual
property right is entitled to pursue certain parallel imports coming from third countries in the
conditions laid down by the case law of the European Court of Justice.
Parallel imports may be pursued not only on the basis of civil law but also of criminal law
(Articles 270 and 274 of the Spanish Criminal Code).
Considering that it is possible to attack parallel imports through civil and criminal
proceedings, it would be possible to request a civil or a criminal court to issue a preliminary
injunction to prevent the infringing goods from entering the Spanish territory. A Court order of
the same kind may also be available when enforcing a judgment. However, in these cases
the measures shall be adopted on a legal basis and proceedings different from EC
Regulation No. 1383/2003.
Taking into account that parallel imports may be pursued according to civil and criminal law,
the Spanish Group believes that the limitations contained inArticle 12 of the Basic Regulation
should not apply. This article states that the information received by the right-holder within
the framework of a customs action may only use this information for the purposes specified
in the EC Regulation.
Are border measures available for goods contained in a travellers’ private luggage?
The Basic Regulation (No. 1383/2003) explicitly excludes from its scope of application the
goods included in the traveller's personal baggage that contain goods of a non-commercial
nature within the limits of the duty-free allowance and there are no material indications to
suggest the goods are part of commercial traffic (Art. 3.2).
In the same sense, Spanish Order EHA/2343/2006 (Art. 1.2.a) contains a similar legal
provision.
Therefore, goods contained in the personal luggage of travellers coming from a third country
shall be admitted free of import duties, provided:
1.
2.
3.
such imports are of a non-commercial nature
there are no signs indicating that such goods are part of commercial trade
the value of such goods is within the quantitative limits per traveller
Goods contained in the personal luggage of travellers coming from a third country shall be
admitted free of import duties, provided such imports are exempt from value added tax (VAT)
under provisions of national law adopted in accordance with the provisions of
The conditions for relief from import duty are established in EC Regulation No. 274/2008, of
17 March, which amends EC Regulation No. 918/83 setting up a Community system of
reliefs from customs duty.
4
As of 1st December 2008, the goods shall be free of import duties is the amount of the total
value of the goods does not exceed:
-
EUR 430 for persons travelling by air or maritime transportation (the previous amount
was 175 EUR).
EUR 300 for persons travelling by land or internal navigable ways.
In order to quantify the value of the imported goods, customs authorities will choose the
following criteria applied in cascade: (i) firstly, the value of the good which is stated in the
invoice; (ii) in case of no invoice, the approximate value of the good.
Are there any other goods excluded by your border measures legislation?
According to Article 3.1 paragraph 2 of the Basic Regulation, border measures shall not
apply to goods which have been manufactured with the consent of the right-holder but are
placed without the latter's consent.
5. Who is entitled to file an application for customs action?
According to the Basic Regulation No. 1383/2003, the owner of the intellectual property right
is entitled to file an application for customs action. For the purposes of the Basic Regulation,
"right-holder" means (Art 2.2):
a) the holder of a trademark, copyright or related right, design right, patent, supplementary
protection certificate, plant variety right, protected designation of origin, protected
geographical indication and, more generally, any right covered by the basic Regulation, or
b) any person authorised to use any of the intellectual property rights mentioned in letter a),
or his/her authorised representative or user.
Is there a centralised system for managing multiple applications for customs action
through a single contact point?
Yes, in Spain there is a centralised system for the reception and proceedings of applications
for customs action:
Departamento de Aduanas e Impuestos Especiales
Subdirección General de Gestión Aduanera
Avenida del Llano Castellano 17, 28071 Madrid
[email protected] (Secretaría Gestión)
Tel. +34 917289854
Tel. +34 917289872
Fax. +34 917291200
What are the conditions for border measures? In particular, what level of evidence for
alleged infringement and other information is required by customs authorities
regarding the application for customs action? To which extent are customs authorities
willing to receive training by the right holder?
5
The application for customs action shall be made out on the form laid down in Annex I of
the implementing Regulation, and must contain:
-
-
-
-
Evidence of the entitlement of the right-holder. If the applicant is not the owner of the
rights, but a person authorized to use the rights, or a nominated representative, then the
applicant must prove his or her authorization to use the rights or act as representative in
addition to proving ownership of a right
Evidence that the right is in force. The usual way to prove this is by providing certified roll
extracts, register extracts or copies of the rights in question. In the case of copyrights,
related rights or design rights which are not registered the right-holders have to
demonstrate credibly that a claim to a right may be made (e.g. affidavit, declarations
concerning the authorship, where available certificates of registration of copyrights).
Declaration in accordance with Article 6 of the Basic Regulation. This is a declaration
signed by the right-holder, undertaking to pay all costs incurred by keeping goods under
customs control, including costs occasioned by the destruction of goods infringing an
intellectual property right. Additionally, in this declaration the right-holder must undertake
to notify the customs authorities of any alteration or loss of his intellectual property rights.
In community interventions, the Member State or States in which the applicant requests
customs action.
Details of the contact person for administrative and technical questions together with a
power of attorney duly notarised and legalised.
Information concerning the goods such as the country where are the authentic goods are
produced, specific channels of distribution, customs offices where the genuine goods are
normally cleared, description of the transport routes, all available information on
counterfeit goods that can be useful to identify suspect consignments (places and
countries of production, channels of distribution, etc.)
The new Manual for Lodging of Applications for Customs Action contains very complete
information on all the data that must be given to customs authorities.
In general, Spanish customs authorities are willing to receive training sessions by the right
holder and specialized organisations, as long as this helps them in their task.
In Spain the acceptance of an application for customs action is not conditioned to the
submission of evidence of the alleged infringement.
Do customs authorities generally require the provision of a security to protect the
owner, holder or importer of the allegedly infringing goods? If so, will such security
depend on the type of IP rights?
Spanish customs authorities do not require the provision of a security to protect the owner,
holder or importer of the allegedly infringing goods by the applicant of customs action.
However, the applicant for customs action is required to provide a declaration in the terms
laid down in Article 6 of the basic Regulation (No. 1383/2003) undertaking to pay all costs
incurred by keeping goods under customs control, including costs occasioned by the
destruction of goods infringing an intellectual property right.
May the customs authorities take ex officio measures? If so, what is the practical
relevance of ex officio action in your country? Are customs authorities liable in case
of wrongful ex officio detention?
The ex officio measures are foreseen in Article 4 of the basic Regulation No. 1383/2003.
6
Customs authorities may suspend the release of the goods or detain them for a period of
three working days from the moment of receipt of the notification by the right-holder and by
the declarant or holder of the goods, if the latter are known, in order to enable the rightholder to submit an application for action.
The customs authorities may, without divulging any information other than the actual or
supposed number of items and their nature and before informing the right-holder of the
possible infringement, ask the right-holder to provide them with any information they may
need to confirm their suspicions.
In practice, Spanish customs authorities only take ex officio actions in a very limited number
of cases. According to the infomation provided by the Spanish customs authorities, the
customs usually find obstacles to contact the owner of the right in order to notify the ex officio
intervention. And even when they manage to contact the owner of the right, it is often
impossible to comply with all the legal requirements and prepare the documentation in only
three days. Therefore, only a very reduced of the ex officio actions (around 10%) are
successful.
The responsibility of the customs authorities is regulated by article 19 of basic Regulation. In
general terms, it governs the principle that the customs authorities’ action in the execution of
their competences in terms of fight against the trade of goods infringing intellectual property
rights shall not affect their responsibility towards the involved people by said action, except
when it is so laid down by the legislation of the corresponding member State.
With regard to Spain, the liability of Public Administrations is contained in Articles 139 to 146
of Spanish Law 30/1992, of 26 November, on the Legal Regime of Public Administrations
and the Common Administrative Procedure (Spanish Bulletin of 27.11.1992).
According to said article 139, the prejudiced party shall have the right to receive a
compensation from the corresponding Public Administrations for any damage suffered in his
goods or rights, except in the cases of force majeure, provided the damage would be a
consequence of a public service. However, article 141 of said Spanish Law 30/1992 states
that only damages produced to individuals that they do not have the legal obligation of
suffering may be compensated.
In the light of the above, all ex officio actions carried out by customs authorities in the field of
the fight against the trade of goods infringing intellectual property rights, are free from any
obligation to compensate for damages as long as the actions carried our by the Customs
authorities are in line with the applicable legal provisions. In other words, incorrect seizures
of goods supposed to infringe an intellectual property right would only give rise to
compensation in the following two cases:
-
If there are no sufficient objective reasons to suspect that they are goods infringing an
intellectual property right, or
-
If the seizure were made without following the usual procedure or legal guarantees
(business secrets, etc.).
7
6. Are customs authorities properly equipped to identify goods which infringe
patents, plant variety rights, common law marks, unregistered design rights,
geographic indications or the like?
For obvious reasons, the identification of goods which infringe patents, plant variety rights,
common law marks, unregistered design rights, geographic indications or the like is more
complex than the identification of goods that infringe trademarks. This is the reason why
most of the goods intervened are goods that infringe trademarks.
The customs are competent, in case of goods suspected to infringe intellectual property
rights, to seize or suspend their release for free circulation communicating it both to the
importer and to the central authorities (Departamento de Aduanas e Impuestos Especiales).
When the customs act ex officio, it is very unlikely that they will suspect that certain goods
infringe patents or plant variety rights as they have no technical and sufficient means to do
so. In practice, most ex officio seizures concern well-known trademarks or highly suspicious
remittances. Controls are made in a selective way trying to balance the fluency of trade and
the fight against fraud. The customs control is mainly based on the use of systems to analyse
risks and the use of computer filters with the aim to spot goods that infringe intellectual
property rights. Both the costs involved and the fluency of trade make it impossible to check
absolutely all containers.
When customs authorities act after a petition of the right holder, the success of the custom’s
action will depend on the thoroughness and detailed information that the right holder can
provide such as specific information concerning the type or pattern of fraud, the location of
the goods or their intended destination, particulars identifying the consignment or packages,
the scheduled arrival or departure date of the goods, the means of transport used, the
identity of the importer, exporter or holder of the goods, the country or countries of production
and the routes used by traffickers, the technical differences, if known, between the authentic
and suspect goods (Art. 5.5 of EC Regulation No. 1383/2003).
7. Is only the right-holder or also the owner, holder or importer of the allegedly
infringing goods notified once the customs authorities detain goods? How can the
alleged infringer obtain information about the status of border measures and what
information is provided by customs authorities to the alleged infringer?
Where the customs authorities have sufficient grounds for suspecting that goods infringe an
intellectual property right, they may suspend the release of the goods or detain them and
must inform not only the right-holder but also the declarant or holder of the goods. The rightholder shall be informed, at his request and if known, of the names and addresses of the
consignee, the consignor, the declarant or the holder of the goods, the origin and
provenance of the goods, the actual or estimated quantity and the actual or supposed nature
of the goods whose release has been suspended or which have been detained (Articles 4
and 9 of EC Regulation 1383/2003).
Even though the aforesaid information is critical for the right-holder, on many occasions it is
difficult to obtain. Certain Spanish Customs departments refuse to provide such information
alleging privacy and confidentiality reasons until the right holder confirms that the goods
infringe their rights. This results in two problems:
8
-
On the one hand, there are cases where it is not possible to determine the existence of
an infringement without knowing the origin of the product, i.e. if the manufacturer or the
importer is a licensee, etc.
-
On the other hand, if the right holder does not have access to the information on the
proprietor, declarant or importer of the goods, they cannot be contacted to solve the
matter using the simplified procedure of Article 11 of EC Regulation 1383/2003.
8. What happens after notification? Briefly describe the procedure following
notification.
Once the right holder has been notified that certain goods suspected to infringe his rights
have been suspended for release, the procedure is the one detailed in article 13 of the basic
Regulation, which can be summarised as follows:
-
The Customs provides the right holder with a period of time to inspect the goods and
confirm whether they infringe their intellectual property rights.
For non perishable goods, the period is of ten working days, which may be extended by a
maximum of 10 working days in appropriate cases. In the case of perishable goods, the
period is of three working days. Within this term, the right holder must determine whether his
rights have been infringed, and, in the affirmative, must start the necessary legal actions.
In both cases, the right holder can use the so-called “simplified procedure” as an alternative
to bringing legal actions. This procedure is described in article 11 of EC Regulation
1383/2003 and is established for those cases where the right holder provides the customs
authorities with the written agreement of the declarant, the holder or the owner of the goods
to abandon the goods for destruction. In Spain, the simplified procedure has been
implemented by Article 2.4 of Order EHA/2343/2006.
-
In those cases where the right holder has started legal actions, the goods suspected to
infringe intellectual property rights will continue to be seized until the legal proceedings
come to an end.
-
In those cases where the simplified procedure is applied, the goods are destroyed at the
cost of the right holder.
Is the inspection of the allegedly infringing goods following notification usually
carried out by the right holder or by an expert?
The applicant for intervention is entitled to inspect the goods suspected to infringe intellectual
property rights (Art. 9 of the basic Regulation).
In practice, customs authorities accept the inspection of goods by a representative of the
right holder as long as the right of representation is proved. The representative inspecting the
goods can be an expert.
Nevertheless, in all cases the customs authorities must make sure that the inspection does
not infringe industrial, professional, administrative or trade secrets, nor any personal data.
9
Does your border measures legislation provide for a simplified procedure allowing the
destruction of the goods without there being any need to determine whether IP rights
have been infringed? If so, in which cases? Are samples of the goods preserved for
evidence purposes?
Yes. Spanish Order EHA/2343/2006, in its article 2.4. has implemented the simplified
procedure of Article 11 of EC Regulation 1383/2003. This procedure allows the destruction of
the goods under customs supervision without the need to determine whether IP rights have
been infringed.
The simplified procedure is applied so long as:
-
the right holder or his authorised representative must inform the customs authorities that
the intervened goods infringe an intellectual property right, and
-
the right-holder must provide the customs authorities with the written agreement of the
declarant, the holder or the owner of the goods to abandon the goods for destruction.
This agreement shall be presumed to be accepted when the declarant, the holder or the
owner of the goods has not specifically opposed destruction within the prescribed period.
This period may be extended by a further ten working days where circumstances warrant
it.
Prior to the destruction, the customs authorities will take samples and will keep them in such
conditions that they constitute evidence admissible in legal proceedings
Besides, the European Court of Justice has recently interpreted Article 11 of EC Regulation
1383/2003, which rules the simplified procedure, in Judgment of 12 February 2008 (Case C93/08, Schenker). This decision states that notwithstanding the application of the simplified
procedure, the customs authorities may still have the faculty of sanctioning the responsible
importers of the infringing rights with a an effective, proportionate and dissuasive penalty in
the sense of Article 18 of the EC Regulation 1383/2003.
If proceedings must be issued to determine whether the goods infringe IP rights, are
both civil and criminal proceedings available to determine infringement? What are the
advantages and disadvantages of the respective proceedings?
EC Regulation No. 1383/2003 admits any kind of proceeding (civil and criminal) to determine
whether the goods infringe IP rights (Art. 13).
Spanish law also allows both civil and criminal proceedings to determine whether the goods
infringe IP rights. In certain cases such as non-registered designs, only civil proceedings are
available.
In practice, the easiest, fastest and most inexpensive proceeding is the criminal proceeding
started by a mere denunciation. Therefore, and considering that the terms are extremely
short, criminal proceedings are the most frequently used.
In Spain, civil actions, including requests for preliminary injunctions, require a great effort in
their preparation and their costs is higher. However, it is the most adequate way in those
cases where it is difficult to prove bad faith of the importer or other conditions required by the
Criminal Code.
10
It must be noted that even if the right holder has initially decided to follow criminal
proceedings, he may later change his mind, withdraw the criminal action and start civil
proceedings.
What is the impact of a nullity action seeking to invalidate IP rights on the application
for customs action?
In Spain, rights are presumed to be valid. In other words, a nullity action seeking to invalidate
IP rights will only affect an application for customs action once there is a final decision
cancelling or invalidating the IP right.
Besides, Article 8.1 of the EC Regulation obliges the right holder to notify the competent
customs department if his right ceases to be validly registered or expires.
May customs authorities release goods suspected of infringing IP rights on provision
of a security by the owner, holder or importer of such goods? If so, will such release
depend on the type of IP rights?
Yes, but only in the case of goods suspected of infringing design rights, patents,
supplementary protection certificates or plant variety rights.
In these cases, and in accordance with Article 14 of EC Regulation 1383/2003, the declarant,
owner, importer, holder or consignee of the goods shall be able to obtain the release of the
goods or an end to their detention on provision of a security, provided that:
(a) the customs office or department has been notified, within the period provided for in
the Regulation (ten days for non perishable goods and three days for perishable
goods) to establish whether an intellectual property right has been infringed under
national law;
(b) the authority empowered for this purpose has not authorised precautionary measures
(c) all customs formalities have been completed.
The security must be sufficient to protect the interests of the right-holder.
9. If goods are found to infringe IP rights, may a right holder oppose
-
exportation of infringing goods from your country;
infringing goods in transit;
placement of infringing goods in a free trade zone or free trade warehouse?
By virtue of Article 16 of EC Regulation 1383/2003, if goods are found to infringe IP rights,
they shall not be:
-
allowed to enter into the Community customs territory,
released for free circulation,
removed from the Community customs territory,
exported,
re-exported,
placed under a suspensive procedure or
placed in a free zone or free warehouse.
11
Therefore, the right holder may oppose the exportation of infringing goods from Spain,
infringing goods in transit as well as the placement of infringing goods in a free trade zone or
free trade warehouse.
10. If goods are found to infringe IP rights, do the judicial or customs authorities of
our country generally order the destruction of the goods or do they have the
authority to dispose of the goods outside commercial channels (e.g. to charity)?
Where the goods have been positively declared to infringe an IP right, Article 17 of the Basic
Regulation allows Member States to destroy the goods, dispose of them outside commercial
channels and forfeit them to the exchequer.
In these cases, the destiny of the infringing goods will depend on the measures requested by
the right holder in the criminal of civil proceedings. Under no circumstances can the customs
authorities decide ex officio to destroy the goods or any other measure to dispose of them
outside commercial channels.
The different Spanish laws protecting IP rights foresee the possibility to destroy the goods
and adopt “alternative measures”. For instance;
-
Spanish Patent Act 11/1986: art. 63.1. paragraphs c) and e) establish the possibility for
the right holder to request “the transformation of the goods ... or their destruction”.
-
Spanish Trademark Act 17/2001: art. 41.1.d) establish the possibility for the right holder
to request the “destruction of the goods or their deliverance for humanitarian purposes”.
-
Spanish Law 3/2000 on plant varieties: art. 21 paragraphs c) and d) establish the
possibility for the right holder to request the “destruction” and/or “attribution in property of
the plant variety”.
-
Spanish Law 20/2003 on the protection of Industrial designs: art. 53.1.d) establishes the
possibility for the right holder to request the “destruction or deliverance for humanitarian
purposes” of the infringing goods.
-
Spanish Wine Act 24/2003: art. 42 paragraph b) establishes the possibility for the goods
to be disposed outside commercial channels or destroyed if their consumption or use is
dangerous for the health.
In any case, the destruction of the goods or their disposal outside commercial channels must
be requested by the right holder within the legal proceedings (criminal or civil). Following the
petition of the right holder, the customs authorities will the proceed to adopt the measures
contained in Article 17 of EC Regulation 1383/2003.
May the competent authorities also order the infringer to give the names of his
accomplices, upstream or downstream in the channels of production and
distribution?
As a preliminary remark, we must state that the only “competent authorities” that would be
allowed to request this sort of information would be the competent courts dealing with the
civil or criminal actions brought by the right holder.
12
Spanish law provides for certain mechanisms that allow the right holder to obtain information
on the infringer, his accomplices and information on the channels of production and
distribution of the infringing goods. These mechanisms are available prior to bringing the
legal action or within the court proceedings.
The jurisdiction of infringement actions of IP rights is of the Commercial Courts. The Spanish
Law on Civil Procedure allows in Article 301 ff. the claimant (right holder) to request as
evidence the interrogatory of the defendant (declarant, holder or owner of the goods).
In addition, Articles 328.1 and 328.3 of the Spanish Law on Civil Procedure establishes an
obligation to exhibit documents that would allow the claimant (right holder) to request the
defendant (declarant, holder or owner of the infringing goods) to exhibit banking, financial,
commercial or customs documents produced during a specific period of time and that are
presumably in possession of the defendant.
Apart from that, Article 330 of the Spanish Law on Civil Procedure allows the claimant (right
holder) to request the exhibition of documents in possession of third parties.
It is even possible to request preliminary enquiries prior to the filing of the complaint in order
to obtain information on the accomplices of the infringer (Articles 256 to 263 of the Spanish
Law on Civil Procedure).
With regard to criminal actions, they are dealt with by the Instruction Courts and then by the
Criminal Courts. During the instruction phase, it is possible to request the interrogatory of the
accused persons (declarant, holder or owner of the infringing goods).
The Spanish Law on Criminal Procedure allows the subsidiary application of the Spanish
Law on Civil Procedure, so the aforementioned means of evidence are also available in
criminal proceedings.
11. May judicial or customs authorities order the applicant to pay the owner, holder or
importer of goods appropriate compensation for any injury caused by wrongful
detention? What is considered appropriate compensation and does it include
attorney fees or other expenses?
EC Regulation 1383/2003 provides in article 6 that applications for action shall be
accompanied by a declaration from the right-holder accepting liability in the event that a
procedure initiated is discontinued owing to
-
an act or omission by the right-holder or
if the goods in question are subsequently found not to infringe an intellectual property
right.
According to Article 19.3 of the basic Regulation, the right-holder's civil liability shall be
governed by the law of the Member State in which the goods are detained.
With regard to Spain, only judicial authorities can order the applicant to pay the owner, holder
or importer of goods appropriate compensation for any injury caused by wrongful detention.
The customs authorities cannot.
The owner, holder or importer of the goods may bring the necessary legal actions before the
civil courts to claim a compensation for damages. This action may be brought as a main
action or as a counter-claim.
13
The corresponding compensation must be fixed according to the circumstances of the case
and the damage caused.
The expenses incurred by the owner or the importer of the goods may be compensated as
damages suffered if the necessary legal conditions apply.
With regard to the fees of the attorney that has represented the owner, holder or importer of
the goods, we must differentiate between the different type of legal expenses:
-
The attorney fees relating to the claim for damages will only be compensated by the right
holder if there is an award of costs made by the Court in favour of the party claiming
compensation.
-
The attorney fees resulting from other non-judicial proceedings may also be
compensated as damage suffered if they are proved to be a consequence of the customs
intervention.
_____________________________
II.
Proposals for adoption of uniform rules:
The Working group considers that, in general terms, the current EC legislation relating to
customs action against goods suspected to infringe IP rights is satisfactory.
Despite the above, we must point out the following proposals for improval:
1.
Concerning the security that the declarant, owner, importer, exporter or holder of
the goods can provide to obtain the release of the goods
Article 14 paragraphs a), b) and c) of EC Regulation 1383/2003 state that the declarant,
owner, importer, holder or consignee of the goods shall be able to obtain the release of the
goods or an end to their detention on provision of a security under certain conditions.
Following this general declaration, the EC Regulation simply states that the security "must be
sufficient to protect the interests of the right-holder".
However, the Regulation does not contain any rules on how the security must be provided:
who determines the sufficiency of the security?, is the procedure contradictory and are both
the right holder and the declarant, owner, importer, exporter, holder heard? what are the
criteria to consider the security sufficient?
Taking into account that in accordance with Article 6 of EC regulation 1383/2003 the right
holder has issued a declaration accepting liability towards the owner, importer, exporter,
holder or declarant of the goods, whose liability is not covered, it should be for the right
holder to determine the amount of the security in a reasoned statement.
14
2.
Uniform application of the “Manual for Lodging of Applications for Customs
Actions” when renewing an application for customs action
In Spain, when the right holder requests the renewal of the customs action, which has an
ordinary duration of one year, the Spanish authorities are following different criteria from
those established in the “Manual for Lodging of Applications for Customs Actions”. Our
authorities only renew the validity of the customs application for action if all the rights
included are in force within the one-year term.
If one of the rights included in the application for action expires within the one year term, the
Spanish authorities will only grant the renewal until the day this right expires, regardless of
the fact that the rest of rights are still in force.
This practice results in an unnecessary workload both for the right holder and for the
customs authorities. In certain circumstances, the renewal of the customs application for
action must be filed several times within one year.
3.
Establish uniform rules to determine whether or not, and for how many days, must
the detention or suspension for release of the goods suspected to infringe an IP
right may be extended.
The Spanish customs authorities do not apply uniform criteria when deciding whether or not
to grant an extension and , in the affirmative, for how many days.
In view of the short terms, and the difficulty for the right holder to obtain the necessary
documents to determine whether the IP rights of the right holder have been infringed, or
simply for obtaining a power of representation in those cases where the right holder is
foreign, we believe that an automatic extension for 10 working days should be granted, just
like in other European countries such as Germany.
Summary
In Spain, and in the European Community in general, there is a highly developed specific
regulation concerning customs action against goods suspected of infringing intellectual
property rights. The principal legal text is currently Regulation (EC) nº 1383/2003.
A request for action should be addressed to the Deputy Director of Customs Administration
([email protected]) and should conform with the model according to the Regulation. There is
no need for the applicant to provide proof of an alleged infringement, but he should submit a
declaration of responsibility for damages caused by the improper retention of goods.
The customs authorities may act on their own initiative, but this is not a frequent practice.
When customs detect suspect merchandise, they temporarily retain it and inform the owner
of the rights and the party responsible for the merchandise.
From this moment onwards, the owner of the rights has in theory ten days in order to verify
whether the merchandise infringes his rights and, if it does, to file legal action. In practice,
criminal jurisdiction is used more commonly that civil jurisdiction. Alternatively, the owner of
the rights may provide customs with a written agreement from the party responsible for the
retained merchandise renouncing said merchandise and authorising its destruction.
15
Résumé
En Espagne, et dans la communauté européenne en général, il existe une régulation
évoluée spécifique sur l'intervention des autorités douanières à l'égard de marchandises
soupçonnées de porter atteinte à certains droits de propriété intellectuelle et industrielle. Le
texte juridique principal est actuellement le Règlement (CE) nº 1383/2003.
Une demande d’intervention devrait être dirigée à la Sous-Direction Générale de
l’Administration Douanière ([email protected]), et devrait s’adapter au modèle réglementaire.
Il ne faut pas que le demandeur apporte des preuves d’une infraction supposée, mais si une
déclaration de responsabilité pour des possibles dommages et intérêts occasionnés par une
rétention indue.
Les autorités douanières peuvent agir de leur propre initiative, mais ce n’est pas une
pratique fréquente.
Lorsque les autorités douanières détectent des marchandises soupçonnées, elles les
retiennent temporairement et informent le titulaire du droit et le responsable des
marchandises de ces faits.
A partir de ce moment, le titulaire du droit a dix jours en principe pour vérifier si les
marchandises portent atteinte à ses droits et, dans ce cas, pour exercer les actions
judiciaires. Dans la pratique, la juridiction pénal est utilisée plus souvent que la juridiction
civile. Alternativement, le titulaire du droit peut apporter aux autorités douanières un accord
écrit du responsable des marchandises retenues renonçant ces marchandises et autorisant
leur destruction.
Zusammenfassung
In Spanien, sowie in der Europäischen Gemeinschaft allgemein, existiert ein hoch
entwickeltes, spezielles Regelwerk für zollamtliche Maßnahmen in Bezug auf Waren, die im
Verdacht stehen gewerbliche Schutzrechte zu verletzen. Die derzeit maßgebliche Vorschrift
ist die Verordnung (EG) Nr. 1383/2003.
Ein Antrag, der den Vorgaben der Verordnung entspricht, sollte an den stellvertretenden
Direktor der Zollverwaltung ([email protected]) gestellt werden. Der Antragsteller ist nicht
verpflichtet Beweise für eine behauptete Verletzung vorzulegen, sollte aber eine
Freistellungserklärung für Schäden abgeben, die durch das unrechtmäßige Zurückhalten von
Waren entstehen.
Die Zollbehörden können aus eigener Initiative tätig werden, auch wenn dies nicht dem
üblichen Vorgehen entspricht.
Wenn die Zollbehörden verdächtige Waren entdecken, beschlagnahmen sie diese
vorübergehend und benachrichtigen den Inhaber der Schutzrechte sowie die für die Waren
verantwortlichen Beteiligten.
Von diesem Zeitpunkt an hat der Inhaber der Schutzrechte theoretisch zehn Tage Zeit um zu
überprüfen, ob die Waren seine Rechte verletzen und gegebenenfalls rechtliche Schritte
einzuleiten. In der Praxis wird überwiegend mit strafrechtlichen statt mit zivilrechtlichen
Mitteln vorgegangen. Alternativ kann der Inhaber der Schutzrechte den Zollbehörden auch
eine schriftliche Vereinbarung mit dem Beteiligten, der für die beschlagnahmten Waren
verantwortlich ist, vorlegen, in der der Beteiligte auf die Freigabe der Waren verzichtet und
ihrer Zerstörung zustimmt.
16
17