Legal Measures Against Counterfeit and Piracy in the European Union and The Netherlands
Intellectual Property (IP) Right holders are often involved in an ongoing battle against counterfeit, pirated and other infringing goods. European and Dutch law provide effective remedies against offering and selling of these goods. Below is a brief summary of the new European Anti-Piracy regulation (608/2013) and a synopsis of remedies available under Dutch Law.
European measures - the new Anti-Piracy regulation
The new Anti-Piracy regulation came into force on 1 January 2014, repealing and replacing the previous Anti-Piracy regulation. This new set of rules regulates the enforcement of IP rights by customs authorities and gives these authorities the power, inter alia, to detain infringing goods at EU borders. The scope of the new regulation has been broadened and several (procedural) changes have occurred. The principal changes are summarized below.
1. Extended Scope of Intellectual Property (IP) rights
The scope of the IP rights covered is extended to include trade names, topographies of semiconductor products (chips) and utility models and devices enabling or facilitating the circumvention of technological measures. On the basis of the previous regulation, customs authorities could only act against counterfeit or pirated goods. On the basis of the new regulation, customs authorities currently also can act against (for instance) confusingly similar trademarks.
2. Simplified procedure for the destruction of infringing goods
The previous regulation provided that EU countries could opt to offer a simplified procedure for the destruction of infringing goods without judicial interference. The new regulation stipulates that all member countries are obliged to offer this simplified procedure. The simplified procedure states that customs authorities can destroy infringing goods if the holder of these goods has agreed to destruction or has not reacted timely.
Please note that this procedure can only be followed after right holders have submitted an application with the customs authorities.
3. Destruction of small consignments
A new procedure was introduced in the new regulation for small consignments (three units or less or less than two kilograms) of counterfeit and pirated goods. This procedure allows customs authorities to destroy these goods without the explicit agreement of the right holder. For the applicability of this procedure, an application also has to be submitted with the customs authorities.
The aforementioned measures can be taken throughout Europe from Greenberg Traurig’s Amsterdam office.
Dutch measures – civil and criminal remedies
In addition to the EU regulation, Dutch law provides a wide variety of civil legal measures that can be used in the combat against counterfeiting, piracy and infringing goods, such as proceedings on the merits, injunction proceedings, ex parte injunctions and conservatory measures. Please note that – under certain circumstances – entities that provide services or applications over the Internet can also be held liable. Furthermore, Dutch law provides that in court cases concerning the infringement of intellectual property rights the actual legal costs (and other expenses) incurred by the winning party should be borne by the losing party.
The offering for sale and/or selling of counterfeit can also constitute a criminal offence under Dutch law.
European and Dutch law provide right holders with efficient and effective legal instruments to enforce its intellectual property rights, especially since the new regulation – that offers more protection for IP right holders – has come into force.