title: border measures and other means of customs ... · 3 concerning action of the customs...
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Question Q208 National Group: German Group Title: Border Measures and other means of Customs Intervention against Infringers Contributors: Klaus Haft, Franz Hacker, Gunnar Baumgärtel Katja Grabienski, Klaus Grabinski, Clemens-August Heusch,
Björn Joachim, Martin Kefferpütz, Thomas Kühnen, Anja Lunze
Date: March 4th, 2009 I. Analysis of current law and case law
1. Do the laws of your country provide for border measures? If so, what is the legal basis?
Yes, border measures of customs authorities against property right-infringing goods are
provided for in Germany, both on the basis of European Community Law as well as on
the basis of the national law.
Under Community law, the intervention of customs authorities - concerning all property
rights - is governed by Council Regulation (EC) No. 1383/2003 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 rights1 effective since
July 1, 2004 (hereinafter referred to as 1383 Regulation)2. Provisions for its
implementation are laid down in Council Regulation (EC) No. 1891/20043, as amended
by Council Regulation (EC) No. 1172/20074. Additional national implementation
provisions can be found - in a decentralized manner - in the individual laws concerning
the protection of intellectual property rights, e.g. Sec. 142b German Patent Act [PatG],
Sec. 150 Trademark Law [MarkenG], Sec. 111c Copyright Act [UrhG], Sec. 57a Design
Act [GeschmMG] and Sec. 40b Plant Varieties Protection Law [SortG].
On the national level, border measures against property right-infringing goods are
provided - also in a decentralized manner - in the various laws concerning the protection
1 OJ No. L 196 dated August 2, 2003, p. 7. 2 The provisions that applied prior to that were the Regulation (EEC) No. 3842/86 (OJ No. L 357 dated
December 18, 1986, p. 1), and the Regulation (EC) No. 3295/94 (OJ No. L 431 dated December 30, 1994, p. 8) as amended by Regulation (EC) No. 241/1999 (OJ No. L 27 dated February 2, 1999, p. 1).
3 OJ No. L 328 dated October 30, 2004, p. 16. 4 OJ No. L 261 dated October 6, 2007, p. 12.
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of intellectual property rights, such as in Sec. 142a PatG for patents, in Sec. 25a Utility
Model Act [GebrMG] for utility models, in Secs. 146-149, 151 MarkenG for trademarks,
other marks and geographic information, in Sec. 111b UrhG for copyrights, in Secs. 55-
57 GeschmMG for designs and in Sec. 40a SortG for plant varieties.
As is made explicit in each of the above-mentioned national provisions, the Community
law provisions in their area of application take precedence over the national provisions. In
order to define this precedence more closely, one must acknowledge the following three
premises:
a) The European Union with its currently 27 member states forms a customs union with
common external customs borders to third states (Art. 23 I EC Treaty [hereinafter
referred to as EC]. The joint border regime is laid down in Regulation (EEC) No.
2913/92 establishing the Community Customs Code (hereinafter: Community
Customs Code). Beside that, the internal borders between member states continue to
be in place, however, without any customs duties being levied. Border controls do
generally not take place, either.
b) The common external customs border is not controlled by a Community customs
authority, but by the national customs authorities (for Germany see Sec. 1 I of the
Customs Administration Law - ZollVG). The same applies to the internal borders, to
the extent that controls are still being carried out (for Germany see Sec. 1 II, III
ZollVG).
c) The property rights to be protected can be either national property rights or
Community property rights with Community-wide applicability. Such Community
property rights currently include the Community Trademark5, the Community Design6
and Community Plant Variety Rights7. These are supplemented by protection on a
Community level for geographical indications and designations of origin for
agricultural products and foodstuffs8, for wines9 and spirit drinks10.
5 Based on Regulation (EC) No. 40/94, OJ No. L 11 dated January 14, 1994 as amended from time to
time. 6 Based on Regulation (EC) No. 6/2002, OJ No. L 3 dated January 5, 2002 p. 1. 7 Based on Regulation (EC) No. 2100/94, OJ No. L 227 dated January 9, 1994, p. 1. 8 Based on Regulation (EC) No. 510/2006, OJ No. L 93 dated March 31, 2006, p. 12. 9 Based on Art. 33 ff. of the Regulation (EC) No. 479/2008, OJ No. L 148 dated June 6, 2008, p. 1. 10 Based on Art. 15 ff. of the Regulation (EC) No. 110/2008, OJ No. L 39 dated February 13, 2008, p.
16.
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Concerning action of the customs authorities, this action is mainly governed by the 1383
Regulation. This applies irrespective of whether the goods in question infringe a
Community property right or a nationally or internationally registered property right.
According to Art. 1 I of the 1383 Regulation, customs action may be considered in
particular in the following situations:
- when goods are entered for release for free circulation, export or re-export in
accordance with Art. 61 of the Community Customs Code;
- when goods are placed under a so-called suspensive procedure within the meaning
of Art. 84 I (a) of the Community Customs Code (e.g. external transit procedure,
bonded warehouse, temporary use);
- when goods are placed in a free zone or free warehouse within the meaning of Art.
166 of the Community Customs Code.
A particular situation is that of property rights with Community-wide scope, because these
can potentially be infringed along the entire external EU border, i.e. in several member
states. If the property right owner wishes to proceed against this infringement not only in
one, but in several or all member states, then Art. 5 IV of the 1383 Regulation provides
for a procedure by which customs action of the authorities in several or all member states
can be applied for with a single application in one member state.
The national protective provisions therefore only apply in the following cases:
a) when mere national action is required and the European law leaves room for it. This
is the case with respect to certain types of national property rights (e.g. utility models,
trademark rights which are not registered, see Question 3), and generally with
respect to combating illegal parallel imports (see Question 4).
b) to the extent that controls take place in internal trade.
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?
Yes. Not even the conditions for action by the customs authorities according to Art. 1 I of
the 1383 Regulation listed in the answer to Question 1 are limited to actions at the
external EU borders in the narrower sense. For example, the term 'suspense procedure'
according to Art. 84 I a of the Community Customs Code also comprises the external
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transit procedure and the temporary use. The external transit procedure e.g. relates to
goods which are not to be imported into the territory of the EU, but which are merely
transported through the Community territory under customs seal, but also to goods which
are transported from an external border to an internal customs office. To this extent, it is
generally possible to also seize goods in transit11 (however, concerning the question of
infringement in this case see Question 9 below). The suspense procedure for temporary
use includes e.g. goods destined to be exhibited and offered at trade fairs. In this respect,
a customs seizure of property right-infringing goods before or at trade fairs and
exhibitions is possible under certain conditions12 and is of considerable practical
relevance.
On a national basis, the customs administration has additionally set up so-called Traffic
Routes Control Units ["Kontrolleinheiten Verkehrswege"]. These are able to seize
property right-infringing goods, preferably close to the borders, but also in the remaining
territory of the Federal Republic of Germany on the basis of Secs. 1 III, 10 ZollVG.
3. Are border measures and other measures of customs intervention against [infringers]
(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?
Originally, the Community Law only provided for action against trademark infringing
goods.13 However, subsequently the scope of these provisions has been gradually
extended. According to Art. 2 I of the 1383 Regulation as amended, border action can be
taken in the event of infringements of the following intellectual property rights:
- registered trademarks (national registered marks, international registrations of the
WIPO14 with a scope extending to the European Union or Germany, Community
trademarks); this comprises not only goods bearing a trademark without
authorisation, but also packagings bearing the infringing mark, presented separately,
and trademark symbols such as logos, labels, stickers, brochures etc.;
- copyrights and related property rights;
11 ECJ GRUR Int. 2000, 748, 750 (No. 26, 27) – Polo/Lauren/Dwidua; GRUR 2004, 501 – Straffreie
Rolex-Plagiate; see also ECJ GRUR 2007, 146, 148 (No. 35 ff.) - Montex v. Diesel. 12 On this aspect see Rinnert/Witte GRUR 2009, 29, 35. 13 Art. 1 II Regulation (EEC) No. 3842/86. 14 WIPO=World Intellectual Property Organization.
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- registered national and Community design rights; wherein design rights with deferred
publication may also form the basis of customs action, provided that the registration
documents including pictures are submitted to the central customs authorities;
- patents and supplementary protection certificates according to Regulations (EC) No.
1768/92 (medicinal products) and No. 1610/96 (plant protection products);
- national and Community plant variety rights;
- geographical indications protected under national law;
- designations of origin and geographical indications for agricultural products and
foodstuffs protected on the Community level according to the Regulation (EC) No.
510/2006 which has replaced the Regulation (EEC) No. 2081/92 still mentioned in
Art. 2 I of the 1383 Regulation;
- geographical indications for wine protected on the Community level according to the
Regulation (EC) No. 479/2008 which has replaced the Regulation (EEC) No.
1493/1999 still mentioned in Art. 2 I of the 1383 Regulation;
- geographical indications for spirit drinks protected on the Community level according
to the Regulation (EC) No. 110/2008 which has replaced the Regulation (EEC) No.
1576/89 still mentioned in Art. 2 I of the 1383 Regulation;
According to national law, customs action may also be considered in the case of
- utility models (Sec. 25a GebrMG);
- unregistered marks protected according to German law by virtue of their secondary
meaning or notoriety (Sec. 146 in conjunction with Sec. 4 No. 2 and No. 3 MarkenG);
- business names, i.e. company names and work titles (Sec. 146 in conjunction with
Sec. 5 MarkenG);
- Semiconductor property rights (Sec. 9 II Semiconductor Protection Act [HalbLSchG]
in conjunction with Sec. 25a GebrMG).
Is actual registration of the IP rights required or is an application to register sufficient?
An intervention of the customs authorities requires that the property right in question
actually exists; to the extent that a registration is required for this, a mere application to
register and/or a use is not sufficient.
Does unfair competition, passing off or the like, give rise to border measures?
No.
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4. Are border measures available for parallel imported goods?
According to Art. 3 I Para. 1 of the 1383 Regulation, unauthorized parallel imports are
exempt from the scope of the 1383 Regulation. However, according to the view held by
the Supreme Tax Court15, and shared by the Federal Government16, yet partly criticized
in the literature17, it is possible to proceed according to the national law which additionally
applies, e.g. Secs. 146 ff. MarkenG in the area of trademarks.
The same applies with respect to original goods to the further sale of which the property
right owner objects for justified reasons, in particular because the goods were modified or
deteriorated after being placed into circulation18, and with respect to goods which were
manufactured by a licensee in violation of a special limitation of the license right.19
Are border measures available for goods contained in a travellers' private luggage?
According to Art. 3 II of the 1383 Regulation, goods in a travellers' personal baggage are
not subject to border measures unless the amount of goods exceeds the limits set for the
grant of a customs exemption, and unless there is evidence suggesting that the goods
are part of commercial traffic. The limit for distinguishing commercial and personal traffic
is generally a value of 430 Euros (for travellers by air or sea) or 300 Euros (for other
travellers) or 175 Euros (for travellers below 15 years of age, irrespective of the means of
transport)20. These allowances do not apply to goods sent by post.
Are there any other goods excluded by your border measures legislation?
No.
15 BFH GRUR Int. 2000, 780 - Jockey; also Fezer, Markenrecht, 3rd edition, Sec. 146 at 5;
Ströbele/Hacker, Markengesetz, 8th edition Sec. 146 at 8; Ingerl/Rohnke, Markengesetz, 2nd edition Sec. 146 at 3; von Schultz/Eble, Markengesetz, 2nd edition, Sec. 146 at 15.
16 See reasons for the draft bill relating to the improvement of the enforcement of intellectual property rights, BT-Drs. 16/5048, p. 34.
17 Knaak GRUR Int. 2000, 782; Heim WRP 2005, 167, 169; Beußel GRUR 2000, 188, 190; Gamerith, FS Koppensteiner, p. 365, 378 f.
18 For trademarks see Art. 7 II Trademark Directive/Sec. 24 II MarkenG and also Beußel GRUR 2000, 188, 190.
19 See Art. 3 I Para. 2 of the 1383 Regulation and for trademarks Art. 8 II of the Trademark Directive/Sec. 30 II MarkenG, and also Ströbele/Hacker, ibid., (fn. 14) Sec. 146 at 8.
20 Federal Ministry of Finance, "Der Zoll - Produktpiraterie im Visier" to be downloaded from www.zoll.de.
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5. Who is entitled to file an application for customs action?
According to Art. 5 I in conjunction with Art. 2 II of the 1383 Regulation, any holder of
the IP rights mentioned in no. 3 paragraph 1 above is entitled to file an application for
customs action, as well as "any other person authorised to use any of the intellectual
property rights mentioned", in particular licensees or their respective representatives.
The same applies with respect to the IP rights to be treated under national law
mentioned in no. 3 paragraph 2 above.
Is there a centralised system for managing multiple applications for customs action
through a single contact point?
In the Federal Republic of Germany it is the Central Authority for Intellectual Property
Law ["Zentralstelle Gewerblicher Rechtsschutz"] of the Federal Board of Finance
South-East ["Bundesfinanzdirektion Südost"] headquartered in Munich who is in charge
of all applications for customs action on account of the infringement of IP rights. For
Community trademarks, Community designs and Community plant variety rights, action
of the customs authorities of other member states can also be applied for through the
German Central Authority (Art. 5 IV of the 1383 Regulation).
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?
a) According to Art. 5 V of the 1383 Regulation, an application for customs action must
be filed, containing all necessary information to enable the goods in question to be
readily recognised by the customs authorities, in particular an exact and detailed
description of the goods and information on the type of assumed infringement. This
minimum information can be supplemented by further information such as trade
channels and means of transport used, the technical differences between the original
goods and the counterfeited goods etc.. Additionally, the customs authorities have the
right to request additional information pursuant to Art. 5 VI of the 1383 Regulation that
is specific to the property right in question.
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b) The applicant has to submit a declaration accepting liability (according to the 1383
Regulation) or an absolute and unlimited security (in the case of national border
measures), see below.
c) According to Art. 9 I of the 1383 Regulation, following the above-mentioned
application, the customs office will take action - in particular by detaining the goods in
question - if there is a suspicion that these infringe an intellectual property right (i.e. one
of the property rights referred to in no. 3 paragraph 1 above). The sufficient but
necessary precondition for this is the "overwhelming likelihood of a property right
infringement"21.
In order for the customs authorities to become active on the basis of national
provisions, i.e. in the situations indicated in no. 3 paragraph 2 above, an "obvious
property right infringement" is required. A property right infringement as such is obvious
only if it is not subject to any reasonable doubt on the basis of conclusive and credible
information given by the applicant and on the basis of all other circumstances of fact
recognizable to the customs authority22.
In practice, however, the question as to whether there is any suspicion or whether an
infringement is obvious is regularly decided on the basis of the identification of
suspected products by the property right holder. A legal assessment by the customs
authority as to whether an infringement is actually present, does not and cannot take
place for practical reasons.
In contrast to this, the Düsseldorf Regional Court ruled that the customs authority has
an obligation of its own to assess a suspected property right infringement23. Seeing that
this assessment is limited to checking the presence of certain identification criteria
given by the property right holder, the assessment imposed on the customs authority
should at least comprise a verification of the supplied criteria for the objective
plausibility of a property right infringement.
To which extent are customs authorities willing to receive training by the right holder?
Apart from the information mentioned above which has to be given in the application for
customs action, the customs authorities, when taking action, may also consider
21 Benkard/Rogge/Grabinski, PatG, 10th edition, München 2006, Sec. 142a, at 20. 22 Benkard/Rogge/Grabinski, PatG, 10th edition, München 2006, Sec. 142a, at 4. 23 InstGE 9, 130, 137 - Druckbogenstabilisierer.
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information that they have received from the right holder/applicant during a hearing, see
Art. 9 I of the 1383 Regulation. In practice, the German customs authorities are very
open to training, in particular concerning the distinguishing marks of trademark and
design infringements. In any event, it is expedient and customary to provide information
material in electronic form for the customs intranet. Protective letters of those
potentially affected by customs action, i.e. of the potential infringers setting forth non-
infringement arguments from the point of view of the potentially affected party, are not
provided for, especially since - as stated above - a legal assessment as to whether an
infringement is actually present does not take place.
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?
According to Art. 6 I of the 1383 Regulation, applications for action of a customs
authority shall be accompanied by a declaration of the right holder/applicant accepting
liability towards the persons affected by the customs actions in the event that a
procedure initiated by the customs authorities upon application of the right
holder/applicant is discontinued owing to an act or omission by the right
holder/applicant, or in the event that the goods in question are subsequently found not
to infringe an intellectual property right.
Furthermore, the right holder/applicant has to agree to bear all costs incurred under
customs control of the goods affected by the application. A security is not required; nor
is there an examination of financial standing.
According to national law, a security has to be provided in the form of an absolute bank
security (see Sec. 146 MarkenG, Sec. 111 b UrhG, Sec. 55 GeschmMG, Sec. 142 a
PatG, Sec. 25 a GebrMG, Sec. 9 HalblSchG, Sec. 40 a SortSchG).
May the customs authorities take ex officio measures? If so, what is the practical
relevance of ex officio action in your country?
According to Art. 4 I of the 1383 Regulation, the customs authorities may, if they "have
sufficient grounds for suspecting that goods infringe an IP right", suspend the release of
the goods or detain them for a period of up to three working days from the moment of
receipt of the notification by the right holder, in order to enable him to submit an
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application for customs action. The ex officio measures of the customs authorizes
provided for are thus limited to a short-time suspension of release, or detention of
suspected goods, in order to enable the affected right holder to file an application for
customs action. Further measures will only be taken if the right holder submits a
corresponding application within the three-days period mentioned above.
This option is indeed being made use of in practice, in particular in trademark and
copyright matters. Yet it does not dispense the right holder from generally enforcing his
rights by filing an application as described above.
Are customs authorities liable in case of wrongful ex officio detention?
This problem is of no particular relevance because the customs authorities in the
Federal Republic of Germany do not become active in the ex officio seizure of
suspected goods, but merely detain them for a very short period in order to give the
right holder the possibility to file an application for customs action. Therefore, a
comprehensive action of the customs authorities which may inflict substantial damage
to the owner/holder of the goods in question will only ever take place upon application
by the right holder who will then be liable.
6) Are customs authorities properly equipped to identify goods infringing patents, plant
variety rights, common law marks, unregistered design rights, geographic indications or
the likes?
Concerning the detention of products identified by the right holder as being suspicious,
the equipment of the German customs authorities leaves nothing to be desired - in
particular thanks to the intranet set up specifically for this purpose.
Concerning the assessment of a product and the legal ascertainment of a property right
infringement, an assessment as such does not take place and would hardly be feasible
in view of the large number of possibly infringed property rights and the large number of
customs offices and officers working there. Consequently, there is no equipment for this
purpose.
In the field of patent law, this occasionally gives rise to the impression that border
measures are mainly used in order to increase the readiness of the affected importers
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to make a compromise prior to the conclusion of civil law proceedings relating to the
question of infringement. This situation is sometimes seen as dissatisfactory.
A restrictive practice concerning the ascertainment of suspicions or obviousness could
be remedial here. For example, in the event of several similar imports, one could rely
on how a competent specialized court has assessed the case when the first import took
place. If the infringement is sufficiently clear to warrant the issuance of a preliminary
injunction - ex parte or upon hearing the opponent - then upon issuance of such a
preliminary injunction, border measures in the event of subsequent imports also appear
to be appropriate. However, should the facts of the case be so complex that
proceedings on the merits are required, it is not understandable why further border
measures should be appropriate before at least the first instance of such proceedings
has not been concluded.
In this context it should be avoided though - at least de lege lata - that border measures
associated with patents become exceptions that will hardly ever take place, contrary to
the intention of the 1393/2003 Regulation. This is true in particular because, owing to
the possibility of release against security, the encroachment is generally less severe
than in the case of injunctive relief. Therefore, the standard to be applied with respect
to the reliability of the suspicion could also be made dependent on which actual
encroachment a detention of the goods will probably entail for the presumable infringer
(e.g. is it likely that the goods are trade fair goods, and will their detention put the
presumable infringer's trade fair attendance at risk? Is the Christmas business at
risk?)24.
De lege ferenda, however, one should consider leaving the establishment of a
suspected property right infringement to the specialized courts, by applying for an
interlocutory judicial remedy. Here, it appears to be useful to be guided by Sec. 142a
(4) PatG:
(4) If the authorized party opposes the seizure, the customs authorities shall inform the applicant thereof without delay. The applicant shall be required to declare to the customs authorities, without delay, whether he maintains the application under subsection (1) in respect of the seized product.
1. If the applicant withdraws his application, the customs authorities shall lift the seizure without delay.
24 ref. to this aspect also Lunze, Grenzbeschlagnahme - ein zu scharfes Schwert?, in: Götting/Lunze, Überprotektion durch Geistiges Eigentum?, p. 167 ff.
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2. If the applicant maintains his application and submits an enforceable court decision ordering the impoundage of the seized product or a restraint on disposal, the customs authorities shall take the necessary measures.
However, like in inspection proceedings, the standard to be applied in this assessment
could differ from that in injunctive proceedings in that a sufficient likelihood of
infringement is sufficient in order to enable border measures to be taken. Conversely,
the specialized court could take into account protective letters, as is the practice
otherwise, and allow the alleged infringer opposing the accusation of infringement to
adequately defend himself. If the alleged infringer is then successful in such
proceedings in the first instance, further border measures between the same two
parties concerning similar products should be suspended.
Such a modified practice would not place an undue burden on the property right holder,
either. This would only be the case if the presumed infringer were to elude the due
process of law by making full use of all procedural options (such as impeding service
abroad by moving and renaming the company). Yet such behaviour as such could
already be seen as giving rise to a suspicion so that even such extreme cases could be
reasonably solved.
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?
First of all, the right holder is notified by the customs office concerned of a contact to be
named in the application. Depending on how difficult it is to identify the suspected
goods, the suspension of release/detention of the goods is either ordered directly and
the corresponding notification is sent out, or the information required for identification is
sent by fax for review. If in the latter case the right holder confirms the identification of
suspected goods, the release of the goods will also be suspended, or the goods will be
detained in accordance with Art. 9 I of the 1383 Regulation. The declarant or owner of
the detained goods will be notified thereof without delay pursuant to Art. 38 Customs
Code Regulation [ZollkodexVO], if possible by fax. If the right holder made an
application according to Art. 9 III of the 1383 Regulation, he and at least one other
affected party will be notified of the amount of goods, their value, country of origin, right
holder and type of property right. Since the contact information of the competent
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customs officer will also be given, it is usually possible without any problems to clarify
or inquire about further details, to the extent permitted by Art. 9 III of the 1383
Regulation.
8) What happens after notification? Briefly describe the procedure following notification. Is
the inspection of the allegedly infringing goods following notification usually carried out
by the right holder or by an expert?
As already mentioned, the inspection of the presumably property right-infringing goods
is a more informal process in practice in which only the right holder is involved. Upon
application of the right holder, the customs authorities may also provide him with
samples or specimen for further analysis.
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?
Since September 1, 2008, the procedure for the simplified destruction of goods
provided for in Art. 11 of the 1383 Regulation is also carried out in Germany. Apart from
a corresponding application by the right holder and the submission of a counterfeit
report, this requires the consent of the declarant, owner or holder of the goods in
question. First of all, a written consent is expected. However, this consent is deemed to
have been given unless an objection against the destruction is made within ten (for
perishable goods: three) working days. For submission as evidence in possible court
proceedings, samples and specimen are kept for the duration of one year.
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?
As stated above, the question as to whether a border measure (suspension of release)
is carried out is decided without waiting for the outcome of another proceeding. If,
however, a border measure is taken and the affected party opposes the simplified
destruction procedure, the right holder has to initiate proceedings for establishing the
property right infringement within a period of ten working days upon the suspension of
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release which can be extended to a maximum of twenty working days, and in the event
of perishable goods of a maximum of three working days.
The German customs authorities require the initiation of civil law proceedings.25 The
additional advantage of civil law proceedings is that a specialized court will deal with
the infringement issue.
According to European law it is sufficient that some kind of proceedings has been
initiated within 10 or 20 (or 3, respectively) working days (Art. 13 of the 1383
Regulation). In contrast to that, according to national law, an enforceable court decision
must be submitted within two or maximum four weeks (e.g. Sec. 142a IV PatG, Sec.
147 MarkenG). Hence proceedings on the merits must be conducted according to
Community law, while the national law relies on interlocutory relief.
What is the impact of a nullity action seeking to invalidate IP rights on the application
for customs action?
Since the customs authorities do not carry out an objective assessment, a nullity suit
against e.g. a patent is irrelevant at least as long as it has not been decided in the first
instance that the property right is not valid. But even after such a decision in the first
instance, border measures are generally possible, as long as the decision has not
become final.
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, this possibility is provided according to Art. 14 of the 1383 Regulation for goods
which are suspected of infringing designs, patents, supplementary protection
certificates or plant variety rights. The procedure is the following:
After both sides have been notified of the suspension of release, after an opposition
against the simplified destruction has been filed, and proceedings for clarifying the
infringement issue have been duly initiated, the declarant, owner or holder of the goods
may apply to the customs office in question for the handing over of the goods according
to Art. 14 of the 1383 Regulation against provision of a security. With this application he
25 See circular letter of the Bundesfinanzdirektion Südost dated August 20, 2008.
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may propose an adequate amount of security. Usually, the right holder will be heard on
this matter in writing. The customs office which has suspended the release will not
decide on the security to be provided until it has consulted with the Central Customs
Authority for Intellectual Property Law [Zentralstelle Gewerblicher Rechtsschutz], in
order to ensure a uniform practice. At least ten, typically twenty working days, or -
depending on the behaviour of the parties involved an in particular the property right
holder -, even more working days lapse between the suspension of release and the
determination of the amount of security. This also applies if the goods in dispute are
detained several times during protracted civil proceedings: the amount of security will
be decided again in each individual case.
None of the available legal remedies must be pending against the suspension of
release, such as an opposition or a objection, if goods are supposed to be released
against provision of a security. In practice, therefore, an assessment of the lawfulness
of the border measure in opposition proceedings does not take place for the simple
reason that the goods in question will not be released for the duration of such
proceedings, and the interest of the parties concerned in the fastest possible release
regularly predominates.
Yet the right holder has the possibility to request the sequestration of the goods
released or not further detained after provision of a security pursuant to Art. 14 I of the
1383 Regulation with the specialized courts in order to secure his right to destruction by
means of interlocutory relief.
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?
Export is generally subject to border measures (Art. 1 of the 1383 Regulation) as well
as civil law measures. In this context, export is still subsumed under the constituent
element of "placing in circulation"26, to the extent that it is not considered an
independent constituent element of infringement, such as in trademark law (see Sec.
14 III No. 4 MarkenG). According to Art. 1 I b of the 1383 Regulation, the customs
authorities may generally also take action if goods are in transit or placed in a free trade
zone. The question as to whether in this case goods may be detained at the border
26 See e.g. Schulte/Kühnen, PatG, 8th edition, Sec. 9 no. 62 with further references.
16
solely depends on whether according to the substantive law regulations of the member
state in question such an act alone already leads to an infringement, or if an
infringement is to be expected. According to the more recent case law27 the mere
transit or placement in a free trade zone alone do not constitute a property right
infringement. Yet seizure at the border remains possible even in these cases if there
are serious concerns based on other specific circumstances that the goods will
nonetheless be placed on the market, and if this would lead to an infringement in the
member state in question28. Such circumstances have to be demonstrated and proved
by the right holder.
10) If goods are found to infringe IP rights, do the judicial or customs authorities of your
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)?
As stated in no. 8 above, it is possible to make use of the simplified procedure of
destroying the goods in question.
Furthermore, as discussed in no. 8 above, in civil law proceedings on the merits aimed
at establishing that the goods in question infringe IP rights of the applicant/right holder,
the destruction of the goods in question may also be requested, provided the property
right has been infringed.
This corresponds to the provision in Art. 17 I a of the 1383 Regulation, according to
which measures have to be adopted which are necessary to allow goods found to
infringe an IP right to be destroyed without compensation and at no cost to the
exchequer, or to be removed from the sales channels in such a way as to preclude
injury to the right holder.
According to this provision of the 1383 Regulation, other measures than the destruction
of the goods in question are generally conceivable. Yet according to German law, the
only alternative to the simplified destruction procedure according to Art. 11 of the 1383
Regulation is the enforceable claim for the destruction of the goods in question
according to the special provisions applying to different IP rights in the event of a
property right infringement. Since the Enforcement Directive 2004/48/EC has been
27 See e.g. EJC GRUR 2007, 146 - Montex v. Diesel; BGH WRP 2007, 1184 - Durchfuhr von
Originalware; BGH WRP 2007, 1185 - Diesel II. 28 See BGH WRP 2007, 1184 [no 14] - Durchfuhr von Originalware; BGH WRP 2007, 1185 [Rn 19]
Diesel II.
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implemented, as of September 1, 2008 the right holder can also request the removal of
the infringing goods from the sales channels instead of requesting their destruction
(e.g. Sec. 142a III PatG, Sec. 18 II MarkenG); a use of the goods e.g. for charitable
purposes would also be conceivable, yet only ever upon the right holder's request in
civil proceedings.
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?
According to Art. 9 of the 1383 Regulation, in order to determine whether an intellectual
property right has been infringed pursuant to the law of the member state in question,
the competent customs office informs the right holder (taking into account the
protection of personal data and business and trade secrets), to the extent known, of the
name and address of the recipient and the sender, the declarant or owner of the goods
and the origin of the goods which are suspected of infringing an IP right. However, the
customs authorities have no authority to order the infringer to give this information.
Pursuant to Art. 12 of the 1383 Regulation the applicant/right holder may only use this
information for establishing the property right infringement, if necessary in court
proceedings, and for carrying out the simplified procedure for the destruction of the
goods in question. Any other use of this information may lead to civil law liability of the
applicant/right holder.
Apart from that, according to German law the applicant/right holder may request
information about the origin and sales channels of the property right-infringing goods in
court proceedings directed at establishing the presence of a property right infringement.
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?
Art. 6 I of the 1383 Regulation provides that an applicant/right holder has to submit a
declaration accepting liability towards persons affected by customs measures in the
event that a procedure initiated by the customs authorities upon application of the right
holder/applicant is discontinued owing to an act or omission by the right
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holder/applicant, or in the event that the goods in question do not infringe an intellectual
property right.
Art. 19 III of the 1383 Regulation furthermore stipulates that any civil law liability of the
applicant/right holder shall be governed by the law of the member state of the
European Union in which the goods in question were placed when the customs
authorities took action.
According to German law, an unjustified detention and possible destruction of goods
triggers a claim to compensation for the damage that the authorized party has
sustained which is independent of the question of negligence (e.g. Sec. 142a V PatG,
Sec. 149 MarkenG). The same applies to actions according to the 1383 Regulation
(e.g. Sec. 142b VIII PatG, Sec. 150 VIII MarkenG). In the case of negligence, damages
claims according to general civil law may additionally arise.
More specifically, under German law such an encroachment obliges the offender to re-
establish the situation that would be in place if the encroachment had not taken place. If
this is not possible, monetary damages have to be paid. These may principally include
attorneys' fees and other expenses of the persons affected by the customs action which
were caused by the measures taken by the customs authorities. Relevant case law
specifically for the case of customs action has not yet been published.
II) Proposals for adoption of uniform rules
1) Do you think that the adoption of uniform rules and best practice of customs authorities
in the area of border measures and better coordination between countries and at an
international level are desirable to improve enforcement?
Such measures appear to be indispensable in particular in the field of cross-border
product piracy in order to achieve effective protection of industrial property rights. At the
same time, however, rules (best practice) should be created which effectively prevent
the misuse of such measures for the purposes of competition.
2) What should the scope of border measures be? Do you think that border measures
should be available also for goods infringing IP rights for which your national law
currently does not provide border measures? If so, which IP rights? Should unfair
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competition give rise to border measures? Which goods should be excluded by border
measures legislation?
The scope of border measures described above which is mainly achieved by the
European Community Law in Germany appears to be sufficient, especially since the
border measures are available for all relevant IP rights, i.e. trademarks, copyrights,
designs, patents and utility models as well as business names, geographical indications
and plant variety rights. We do not see any need for creating border measures for other
goods, or for basing them on unfair competition. The latter would probably hardly be
practicable in a proper way. An exclusion of certain goods should not take place, either.
3) What rules should apply in relation to the lodging and processing of applications for
customs action? Should there be a centralised system for managing multiple
applications for customs action through a single contact point? Should there be uniform
rules on the provision of information by the applicant?
The practice described above of processing applications for customs action, currently
established in Germany mainly on the basis of the Community Law appears to be
pertinent, see above Sec. II, no. 5) to 8). To the extent that free trade zones or cross-
border economic areas exist, centralised systems for managing such applications
should be created. In addition to that, it appears to be worth considering to create a
central contact point, e.g. in the WIPO, which facilitates the processing of such
applications on an international level and which in particular creates uniform standards
for the provision of information by the applicant.
What should the required level of evidence for alleged infringement be?
An infringement should at least be probable on the basis of verifiable facts. Especially
in complex cases - such as patent infringements - this verification should be performed
by specialized courts. For this purpose it may be useful to create suitable summary
proceedings. The arguments of the alleged infringer should be accessible for
consideration at least in the form of protective letters. We refer to the discussion of the
current legal situation in response to Question I.6 above in this respect.
Should there be uniform rules on the provision of information by the customs
authorities?
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This seems appropriate.
4) What rules should apply in relation to the procedure following notification? Should
there be a simplified procedure allowing the destruction of the goods without there
being any need to determine whether IP rights have been infringed? Should there be
uniform rules on the examination of the goods by the right holder, security and
compensation in the case of wrongful detention of goods and disposal of infringing
goods?
Above all, the possibility of release against security, e.g. in the field of patent disputes,
seems to be important. This should be independent of further questions and should be
able to be generally carried out quickly, i.e. also within few hours or days, depending on
the situation.
A simplified procedure for destruction is useful in particular in the field of traditional
product piracy in trademark and design cases. Uniform rules do not seem to be
necessary so much for the right holder examining the goods, but for a proper
assessment of these examination results by the customs authorities or specialized
courts.
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Summary
The proposals of the group are guided by the current practice in Germany which is
mainly based on European Community Law. On this basis, and in particular in the case
of parallel imports, on the basis of the national law, the German customs authorities
have developed effective protection above all in the field of trademark and design
infringements, which should also form the basis for a possible international
harmonization. However, there are some reservations against the application of this
practice to patents and plant variety rights, as has been done for some years.
Therefore, in the context of a harmonization, one should make sure that, deviating from
the current German practice, at least when the respective importer opposes the border
measure, specialized courts will be applied to for assessing the grounds for suspicion
underlying the "border measure", and that irrespective thereof, affected goods could be
released immediately against provision of a security.
Résumé
Les propositions du groupe allemand s'orientent à la pratique allemande qui est dans la
plupart des cas basées sur le droit communautaire. Sur cette base et en outre aussi en
cas d'importations parallèles sur la base du droit national, les autorités douanières
allemandes ont développé une protection efficace surtout sur le plan de la contrefaçon
de marques et dessins. Cette pratique allemand peut servir comme base pour une
harmonisation internationale. Toutefois, il y a des doutes par rapport à l'application de
cette pratique aux brevets d'invention et aux droits à la protection nationale des
obtentions végétales selon le droit interne comme s'est fait depuis quelques ans. A cet
égard il devrait être fait attention dans le cadre d'une harmonisation - en différence de
la pratique allemande actuelle - que les tribunaux spécialisés en matière du droit de la
propriété intellectuelle examinent s'il y avait de soupçon suffisant pour l'intervention des
autorités douanières au moins en cas d'opposition de l'importateur. Indépendamment
d'une telle procédure légale - au moins en cas d'opposition de l'importateur - il devrait
aussi être possible que l'importateur puisse immédiatement obtenir la mainlevée ou la
levée de la retenue des marchandises moyennant le dépôt d'une garantie.
Zusammenfassung
Die Vorschläge der Gruppe orientieren sich an der bestehenden deutschen Praxis,
welche überwiegend auf europäisches Gemeinschaftsrecht gestützt wird. Die
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deutschen Zollbehörden haben auf dieser Grundlage und daneben insbesondere bei
Paralallimporten auf der Grundlage nationalen Rechtes einen effizienten Schutz vor
allem im Bereich von Marken- und Geschmacksmusterverletzungen entwickelt,
welcher auch einer möglichen internationalen Harmonisierung zugrunde gelegt werden
sollte. Allerdings bestehen hinsichtlich der seit einigen Jahren gegebenen Übertragung
dieser Praxis auf Patente und Sortenschutzrechte Bedenken. Insofern sollte im
Rahmen einer Harmonisierung abweichend von der derzeitigen deutschen Praxis
sichergestellt werden, dass zumindest im Falle des Widerspruchs des jeweiligen
Importeurs gegen die Grenzmaßnahme Spezialgerichte mit der Prüfung des der
„Grenzmaßnahme“ zugrundeliegenden Verdachtsmomentes befasst werden und dass
unabhängig hiervon betroffene Waren unverzüglich gegen Sicherheitsleistung
freigegeben werden können.