Analyse du projet de directive sur les mesures autorisées pour assurer le respect de la propriété intellectuelle (en anglais)

Publié le 19/08/2003 par Paul Van den Bulck, Mélanie Verroken

Ce 30 janvier 2003, la Commission européenne a approuvé la version finale du projet de directive concernant les mesures et procédures autorisées pour assurer le respect de la propriété intellectuelle. Le processus d’adoption se poursuit et devrait déboucher sur un texte définitif au début de l’an 2004. This 30th January 2003, the Commission adopted the…

Ce 30 janvier 2003, la Commission européenne a approuvé la version finale du projet de directive concernant les mesures et procédures autorisées pour assurer le respect de la propriété intellectuelle. Le processus d’adoption se poursuit et devrait déboucher sur un texte définitif au début de l’an 2004.

This 30th January 2003, the Commission adopted the final text of a proposal for the Directive of the European Parliament and of the Council on measures and procedures to ensure the enforcement of intellectual property rights (http://europa.eu.int/eur-lex/en/com/pdf/2003/com2003_0046en01.pdf). This text is actually in the “reading procedure” by the Parliament and the Council, and is expected to be accepted at the latest around the start of 2004.

I. Basis for the proposal for the Directive

The proposal for the “Directive of the European Parliament and of the Council on measures and procedures to ensure the enforcement of intellectual property rights” is the final answer to a consultation, in 1998 launched by the Commission with a Green Paper on combating counterfeiting and piracy in the single market. As a result of the reactions to this Green Paper, the Commission adopted a Communication on 30 November 2000, announcing a series of practical measures intended to strengthen the fight against counterfeiting and piracy in the single market. The most important element in the Communication was the announcement that the Commission was going to submit a proposal for a Directive on the enforcement of intellectual property rights, which is the subject of this paper.

II. Objectives of the proposal for the Directive

The main objectives of the proposal are to harmonise national laws on the enforcement of intellectual property rights and to create a general framework for the exchange of information between the responsible national authorities.

The reason therefore is the considerable difference in the legislations of the Member States, which counterfeiters and pirates took advantage of, by operating from countries that provide the lowest level of protection. The consequences were an ever-increasing harm to business (lower investments in innovation, R&D, closure of SMEs), society (job losses in the sectors of genuine products, decreased consumer safety because the counterfeited products are not checked whether complying with EU-conditions, threat to creativity) and governments (loss of tax revenue due to unregistered workers in the sector of the counterfeited products).
The harmonisation should reduce these problems to a minimum.

III. Content of the proposal for the Directive

After the harmonisation of certain intellectual property rights (e.g. trade marks and designs) and the creation of unitary rights at community level (e.g. community trade marks and community designs) in the field of substantive intellectual property law, it is a logical extension that the Community takes an interest in the effective enforcement of these intellectual property rights.

The Directive will be perfectly supplemental, for the needs of the internal market, to, on one hand, the “Council Regulation (EC) No 3295/94 of 22 December 1994 laying down certain measures to prohibit the release for free circulation, export, re-export or entry of counterfeit and pirated goods”, applying only to movements of suspected goods between third countries and the Community, and on the other hand, to the Agreement on Trade Related aspects of Intellectual Property Rights (TRIPs).

The TRIPs Agreement, concluded by the World Trade Organisation, is applicable in all the Member States of the EU. It provides for minimum provisions on the enforcement of intellectual property rights. The proposed Directive goes beyond those minimum provisions, basing its proposed provisions on the best practices found in the various legislations of the Member States. Examples of provisions include : the publication of judicial decisions; the recall of the infringing goods at the infringer’s own expenses; the precautionary seizure of the infringer’s bank account and other assets to ensure the recovery of damages, and interlocutory injunctions to prevent any infringements or to prevent the continuation of alleged infringements.

To promote freedom of movement and ensure fair and equal conditions of competition in the Internal Market the EC Treaty is not sufficient. Harmonisation of the national provisions on the enforcement of intellectual property rights will create better movement of goods within the internal market, greater transparency in the system of penalties and improved application of the means made available to right holders.

To comprehend only a glimpse of the scope of the directive and the big changes it is supposed to bring after its implementation and in comparison with the TRIPs, special attention should be given to its following articles :

• Article 17 of the proposal for the Directive concerning “damages” to be paid by the infringer to the right holder supplements article 45 of the TRIPs. Even though the directive does not constitute ‘punitive damages’, but only ‘compensatory damages for the prejudice suffered’, just like the TRIPs, the Directive gives the prejudiced party the choice between fixed-rate damages equal to double the amount of the royalties or fees which would have been due if the infringer had requested authorisation or compensatory damages whereby other elements then economic factors may be taken into account such as the moral prejudice. Also the profits made by the infringer may be added to the damages and therefore, the right holder only needs to provide evidence with regard to the amount of the gross income achieved by the infringer while the latter being bound to provide evidence of his deductible expenses and profits attributable to factors alien to the infringement.

• Article 18 of proposal for the Directive concerning the “legal costs” completes once more the TRIPs (article 45 (2)). The infringer pays in full legal costs, lawyer’s fees and other expenses incurred by the successful party unless equity or the economic situation of the other party does not allow this.

• Article 20 of the proposal for the Directive contains the provisions under criminal law to make sure that all infringements are punishable by effective, proportionate and deterrent criminal penalties.

IV. Plus d’infos ?

En consultant le projet de directive, en ligne sur notre site.