COM(2017)0708

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SWD(2017)0431

EUR-Lex
SWD(2017)0432

The Commission has issued new guidelines which provide clarifications on how to implement Directive 2004/48/EC of the European Parliament and of the Council on the enforcement of intellectual property rights (IPRED). The Directive has proved useful in the fight against infringements of intellectual property rights (IPR), but Member States have sometimes had differing interpretations of some of its provisions.

These guidelines seek to clarify these issues with the aim of improving legal certainty for all parties concerned and facilitating the consistent application and interpretation of civil law provisions across the EU without the need for new legislation.

The views presented in the guidance are based on the preliminary rulings issued by the Court of Justice of the European Union (CJEU) since the Directive’s adoption, and on the conclusions from IPRED’s evaluation, including public consultations, as well as best practices identified at national level.

The guidelines are an integral part of a broader IPR package . More specifically, they aim to:

Improving the effectiveness of the civil enforcement framework for IPRs : the guidelines place particular importance on issues affecting SMEs, including the rules on calculating damages and the rules on reimbursing legal costs differ across the EU and are in some situations insufficient to cover the full costs incurred by the successful party.

The guidelines deal in particular with lump sum damages, types of expenses to be reimbursed (ex: legal fees, services of a technical adviser).

Ensuring a balanced approach to IPR enforcement and preventing abuse : the Commission recalled that the IPRED Directive respects fundamental rights and observes the principles recognised by the EU Charter of Fundamental Rights; in particular, it aims to ensure full respect for intellectual property .

In consequence, the rules set out in the Directive must be interpreted and applied in such a way that not only is this specific fundamental right safeguarded, but other fundamental rights at issue are also fully considered and respected. The latter can include, as the case may be, the rights to effective judicial protection and to protection of privacy and personal data , as well as the freedoms of expression and to conduct a business.

The guidelines stressed the importance of striking a fair balance between different fundamental rights when applying the right of information set out in Article 8 of the IPRED. They stated that any order by the competent judicial authorities to provide information issued under Article 8 should only concern information which is actually needed to identify the source and scope of the infringement. Lastly, they called for effect to be given to the obligation to protect confidential information through appropriate means which provide for the necessary safeguards.

Ensuring effective IPR enforcement, including in a digital environment : the guidelines focus in particular on the issue of injunctions and intermediaries . The views expressed in the public consultation show that right holders consider preliminary injunctions as an essential instrument to protect their rights. In addition, in the digital environment, in particular, the services of intermediaries may increasingly be used by third parties for infringing activities; in many cases, such intermediaries are best placed to bring such infringing activities to an end.

The guidelines also clarify the possibility which exists in the national laws of certain Member States to allow screenshots as evidence in legal proceedings brought under IPRED, provided that they indicate the allegedly infringing goods or services in a sufficiently visible and precise manner and comply with certain procedural safeguards, can in the Commission’s view be considered as best practice.

Ensuring the ‘single market’ dimension of IPR enforcement : the guidelines clarify the rights covered by the Directive as well as the question of the right to request the application of measures, procedures and remedies.

It is stipulated that the rebuttable presumption of authorship or ownership provided in Article 5 of IPRED should be interpreted and applied in such a manner that its objective to facilitate the enforcement of the relevant IPR by authors and holders of rights related to copyright is safeguarded.

Issues relating to jurisdiction of courts , the recognition and enforcement of court decisions and applicable law arising in the context of IPR-related litigation are to be decided in accordance with the EU legal instruments regulating these matters, in particular the Brussels I and Rome II Regulations .

COM(2017)0708
EUR-Lex

This report provides the first assessment of the implementation and impact of Directive 2004/48/EC on the enforcement of intellectual property rights ('the Directive'). The assessment is based both on the Commission's appraisal of developments and on feedback received from Member States through national reports, which, in turn, reflect views expressed by industry, legal practitioners, consumers' associations and other interested parties.

The report notes that infringements of intellectual property rights cause widespread economic harm. A significant number of products infringing intellectual property rights now pose a real threat to consumer health and safety. Proper protection of intellectual property rights is fundamental to stimulate innovation and culture in a competitive, wealth-generating, knowledge-based economy. Different interests have to be carefully balanced. To this end, the Commission will continue to be actively engaged with all stakeholders.

The information received points to the conclusion that the Directive has had a substantial and positive effect on protecting intellectual property rights under civil law in Europe. The Directive created a straightforward framework for enforcing intellectual property rights which, broadly, provides comparable protection across national borders. In particular the presumption of authorship or ownership (Article 5), the possibility of "sampling" in the context of information gathering (Article 6), provisional measures to preserve evidence (Article 7) and the possibility of injunctions against intermediaries (Articles 9 and 11) have helped render the enforcement of intellectual property rights in the EU more effective. However, due to late transposition of the Directive in many Member States (the transposition process was not completed until 2009) experience in applying the Directive is limited and only few court cases have been reported. Therefore, the Commission has not been able to conduct a critical economic analysis of the impact that the Directive has had on innovation and on development of the information society, as provided for in the Directive.

Despite these limitations, this initial evaluation of the effectiveness of the Directive comes at the right time. Several studies have shown that infringements of intellectual property rights have reached a significant level, with certain of these goods posing a danger to consumers' health and safety.

The analysis shows that certain provisions of the Directive including the relationship with other Directives are understood in different ways in the different Member States and have given rise to different interpretations and application in practice. These provisions could warrant further clarifications to make the Directive fully effective.

The Internet and digital technologies have added an extra, challenging dimension to enforcing intellectual property rights. On the one hand, the Internet has allowed creators, inventors and their commercial partners to find new ways to market their products. On the other hand, it has also opened the door to new forms of infringements, some of which have proved difficult to combat.

The report sets out a series of concrete issues where clarification may be needed , in particular to adapt the Directive to the new challenges inherent in a modern Digital Society. Among them, one could mention the use of provisional and precautionary measures such as injunctions, procedures to gather and preserve evidence (including the relationship between the right of information and protection of privacy), clarification of the meaning of various corrective measures, including the costs of destruction, and calculation of damages.

EU action: the report goes on to note that a European Observatory on Counterfeiting and Piracy has been set up to improve the understanding on IPR infringements and create a platform for representatives from national authorities and stakeholders to exchange ideas and expertise on best practices, develop joint enforcement strategies and make recommendations to policy-makers. The report adopted by the European Parliament also expressed support for an enhanced policy, including a strong legal framework to combat counterfeiting and piracy.

Infringements of intellectual property rights taking place outside of the EU also constitute a major source of concern. The Commission is addressing them in different ways, for instance by including ambitious chapters on intellectual property rights in bilateral trade agreements and through participation in international initiatives, such as the on-going negotiation of the ACTA agreement

With a view to informing the Commission's decisions on any future measure that might be envisaged and to feed the thorough impact assessment work that the Commission is launching concerning the issues mentioned in the report, the Commission welcomes any feedback from all interested parties on the report by 31 March 2011.

Lastly, the report is complemented by a Commission Staff Working Document which provides additional information and background on its findings.

EUR-Lex
COM(2010)0779

The Commission presents a Staff working document which accompanies the report from the Commission on the application of Directive 2004/48/EC on the enforcement of intellectual property rights. The paper describes the transposition of the different articles of the Directive by Member States and their application in practice, problems which have arisen in the interpretation of some provisions but also sets out other issues that currently are not explicitly covered by the Directive but have proved to be of importance for an effective enforcement of intellectual property rights. It draws a number of conclusions as to the issues that could be addressed in the context of a possible review of the Directive. These issues include the following:

the concept of intermediaries and the workability of injunctions; the scope of the Directive; the question of the right balance between the right of information and privacy laws; other issues including options available to address problems in collecting evidence in cross-border cases and the usefulness of harmonising the secondary use of goods infringing intellectual property rights and possible problems related to such harmonisation.

SEC(2010)1589
EUR-Lex

Directive 2004/48
OJ L 195 02.06.2004, p. 0016-0025

T5-0147/2004
OJ C 102 28.04.2004, p. 0033-0242 E

Debate in Parliament

T5-0147/2004

A5-0468/2003

A5-0468/2003

CES1385/2003
OJ C 032 05.02.2004, p. 0015-0019

2490

COM(2003)0046
EUR-Lex

COM(2003)0046
EUR-Lex