Legal Alerts/30 Dec 2014

Legal Alert – Update on the EU Enforcement Database and Other EU Initiatives in the Fight against the Sale of Counterfeit Goods

A new version of the EU-wide Enforcement Database (“EDB”) was launched in April this year. It includes a connection to the custom officials’ secure network owned by the European Commission’s Directorate-General for Taxation and Customs Union. All customs officers across the 28 EU Member States are able to connect to the EDB from their own workstations. By the end of November 2014, already around 100 companies have registered to the EDB.

Main features of the EDB

The EDB is one of the key projects of the EU Observatory. It improves significantly the communication possibilities for the right holders and customs authorities since it enables businesses to continuously upload data with regard to their IPRs, such as logistics, identifiers, packaging and prior cases. One main additional value compared to the COPIS database, in operation since 1 January this year, is indeed that all levels of the customs authorities, including those persons who the facto does the investigative work, can access up-to-date information on infringing goods through the EDB. The EDB is expected to be an essential tool in helping the enforcement authorities trace and distinguish genuine goods from counterfeits. As of mid-2015, right holders may also file (upload) their Applications for Action through the EDB in the language that best meets their needs. In 2015, it is further possible to connect to Europol’s Police Operations Network through the EDB. Notably, the use of the EDB is free of charge.

The EDB may, if well utilized, be the most efficient tool for the customs and other authorities to follow counterfeit traffic information and more easily spot counterfeit goods. Right holders are recommended to make use of this tool in the fight against counterfeit goods.

Other recent and pending developments

The year 2014 has brought many essential legislative amendments, rulings and initiatives improving the possibilities to take action against counterfeit and pirated goods. The new EU Customs Regulation 608/2013, in force since 1 January, made the simplified procedure mandatory. A new cost-efficient enforcement procedure was also introduced for small consignments. Notably, the CJEU ruling C-98/13 (Martin Blomqvist v Rolex SA, Manufacture des Montres Rolex SA) in February confirmed that right owners can take action against counterfeit and pirated goods when sold online from third countries to EU residents, even if the web shop in question does not specifically target EU residents. The pending EU trademark reform package (the revision of the Community Trademark Regulation 207/2009 and the Trademark Directive 2008/85/EC) includes a proposal for corresponding provisions enabling trademark owners to take action against import into the EU of infringing goods when only the consigner is acting for commercial purposes.

The Commission’s proposals for a new trademark directive and regulation (published in March 2013 and pending in the Parliament and Council) further include provisions according to which trademark owners can take action against counterfeit goods entering into the customs territory of the EU without being released for free circulation here. Counterfeit goods in transit to a third country would under the proposed transit clauses as a starting point be deemed to infringe on EU and national trademark rights. The new regulation and directive will hopefully be finally adopted within the course of 2015.

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