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 gesadu@aeat.es (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 (gesadu@aeat.es) 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 (gesadu@aeat.es), 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 (gesadu@aeat.es) 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