Enforcement of intellectual property rights

KEY POINTS

Objectives

The directive’s main objective is to ensure that the same tools are available throughout the EU for creators and innovators to be able to exercise their intellectual property rights. However, in addition to tackling counterfeiting and piracy, it also helps to achieve other objectives which include:

• promoting innovation and business competitiveness — punishing counterfeiting and piracy effectively, can help ensure confidence in the single market;
• safeguarding employment in Europe — damage suffered by businesses as a result of counterfeiting and piracy is reflected in the number of jobs offered;
• ensuring consumer protection — consumers are deliberately cheated as to the quality they are entitled to expect from a product posing risks to both health (e.g. counterfeit medicines or cosmetics) and safety (e.g. counterfeit toys or electrical appliances) and do not in principle benefit from a guarantee, after-sales service or effective remedy in the event of damage;
• ensuring the maintenance of public order — counterfeiting and piracy infringe labour legislation (clandestine labour), tax legislation (loss of government revenue), health legislation and legislation on product safety.

Scope

The directive applies to any infringement of IPRs provided for by EU law and/or by the national law of the EU country concerned.

This directive does not affect:

• the EU rules on the enforcement of rights concerning and related to copyright;
• EU rules governing the substantive law on intellectual property (that is, law defining rights and obligations in relation to intellectual property);
• EU countries’ international obligations and notably the Agreement on Trade-Related Aspects of Intellectual Property Rights (known as the ‘TRIPS Agreement’);
• any national rules in EU countries relating to criminal procedures or penalties for infringing IPRs.

General obligation

• EU countries should set up the measures, procedures and remedies needed to ensure the enforcement IPRs and take appropriate action against those responsible for counterfeiting and piracy.
• Those measures, procedures and remedies should be effective, proportionate and dissuasive, but avoid creating barriers to legitimate trade and offer safeguards against their abuse.

Application for protection

A request to apply intellectual property protection measures may be submitted by:

• the holders of IPRs,
• all other persons authorised to use those rights (e.g. licensees) and bodies representing holders of intellectual property rights (intellectual property collective rights-management bodies and professional defence bodies) in accordance with the applicable law.

Right of information

At the request of the claimant, a court may order information to be provided on the origin of the goods or services that are thought to infringe an IPR and on the networks for their distribution or supply, by the infringer or any other person, if that person:

• was found in possession of the infringing goods on a commercial scale;
• was found to be using the infringing services on a commercial scale;
• was found to be providing on a commercial scale services used in infringing activities;
• was indicated as being involved in the production, manufacture or distribution of the infringing goods or services.

Rules on obtaining and preserving the evidence

At the request of the applicant, a court may order the opposing party to present evidence which lies in its control, subject to the protection of confidential information. The court may also issue measures allowing relevant evidence to be preserved in respect of the alleged infringement.

Provisional and precautionary measures

At the request of the applicant, a court may issue an interlocutory injunction¹ intended to:

• prevent any impending infringement of an IPR;
• forbid, on a provisional basis, the continuation of the alleged infringements of an IPR;
• make the continuation of the alleged infringement subject to the lodging of guarantees intended to ensure that the right holder is compensated.

In certain cases, the judicial authorities may authorise the precautionary seizure of the movable and immovable property of the alleged infringer, including the blocking of his/her bank accounts and other assets.

Measures resulting from a decision on the case

At the request of the applicant, a court may order corrective measures allowing the recall or removal of the infringing goods from the market or their destruction.

A court may also issue a permanent injunction preventing the infringement from continuing or award damages to the injured party.