海關扣押規則是源於歐洲議會，是為了保護歐洲議會會員國的智財權，所設計出的強力工具。結果，這項工具所要保護的，主要是在歐洲專利局（European Patent Office，簡稱EPO）登記專利，以及在商標設計內部市場調和局(Office for Harmonization in the Internal Market (Trade Marks and Designs)，簡稱OHIM)登記商標與設計的各個智財權所有人。
概觀
美國國際貿易委員會（United States International Trade Commission，縮寫USITC）與歐盟在海關扣押上的異同比對。
Introduction
An increasing number of Asian companies are applying for intellectual property rights (IPR's)（note 1） in Europe. However, many Asian IP right holders, while accustomed to USA's International Trade Commission (ITC)seizure procedure, are unaware of the powerful customs regulations that exist in the European Union (EU).
Border Detention is often a vital part of an intelligent IP business and strategy. The sensational San-Disk case, in which Sisvel (an Italian patentee) effectively blocked all San-Disk MP3 players from being sold or even entering the EU without a Sisvel license is an example (2008).
The Border Detention regulation stems from the European Convention, and is a powerful tool designed to protect the intellectual property rights (IPR's) of European Community members. As a result, the protection it offers IPR's holders should be a major consideration for registering their patents with the European Patent Office (EPO), and their trademarks and design patents with OHIM (Office for Harmonization in the Internal Market (Trade Marks and Designs)).
Overview
In order to facilitate and promote trade between member countries, the EU functions as a Customs union. Therefore when importing into the EU, as soon as goods is cleared by any EU Customs office, they are free to move throughout the EU regardless of national borders. Goods may also be moved between various EU member states and stored without being Customs cleared, although such goods have to be cleared at some point if they are to be traded within the EU.
EU member states are encouraged to promote cooperation between their respective customs authorities to prevent IPR infringement. Hence the introduction of the EC Border Detention practice, governed by Regulation 1383/2003 (EC), which provides for the detention of goods not yet cleared by Customs – the so-called transit regimes. IPR's holders should thus apply for a Border Detention order against goods which may possibly infringe on their IPR's before such goods are cleared. This application should be logged at the customs office where the goods are first to enter the EU, where they are stored, or where they will eventually be inspected. The IPR's holders need only prove that he/she has IPR's in the country in which the allegedly infringed goods will enter the EU, be in transit, or be cleared. Compared to obtaining a seizure of imported goods from the ITC in the USA, it is much easier to get a border detention order against an alleged infringer within the EU (see fig. 1).
Fig. 1 Differences between US ITC procedure and EPC Border Detention
USA ~ ITC
EPC Border Detention
Legal proceedings before the ITC resulting in a judgment before an EXCLUSION ORDER
Administrative procedure to obtain Border Detention order – thereafter litigation and judgment
Administrative Judge decides on infringement and validity of IPR's
No administrative decision as to the infringement or validity of the IPR's
Applicant needs to prove that domestic industry will be harmed by infringing goods
No requirement to prove harm to domestic industry
Appeal possible – Court of Appeals Federal Circuit
No appeal – administrative procedure
Only foreign produced products may be excluded
Detention order available to prohibit both import or export of infringing goods
Procedure
1. APPLICATION PHASE
Firstly, in order to successfully apply for a detention of infringing products, the IPR's holder will have to supply the relevant Customs authority with the following facts:
characteristics of the infringing products,
origin of infringing products,
expected time and port of arrival in the EU,
possible distribution routes within the EU, and
proof of ownership or an exclusive license of the IPR.
No technical infringement details are required in the request to the Customs authorities (i.e. The IPR's holder does not have to prove infringement).
2. CUSTOMS REVIEW: BORDER DETENTION ORDERED
Next, the Customs authority will consider the documentation, and usually grant the IPR's holder's request within a few weeks and issue a detention order for the goods.
3. GOODS DETAINED BY CUSTOMS
The next step involves detaining the goods: Once the suspect goods have been located at the Customs office, the detention order will be attached. The Customs officials will then inform the IPR's holder of such detention. IPR's holders are allowed to inspect the goods and to take samples for technical investigation. In addition, Customs officials will supply IPR's holders with the name and address of the consignee, the consignor, the declarant or the holder of the goods.
4. APPLICANT FILES SUIT
From the start of the detention, the IPR's holder will have 10 working days to file suit against the alleged infringer. The national law of the country where the goods are detained will apply for the infringement litigation. If an infringement suit is not filed within the given time, the detention order will be lifted and the goods will be cleared.
The detention order will be valid until the outcome of the patent litigation. The detained goods will then be disposed of as ordered by the national court.
Goods may however be released by Customs upon payment of security by the owner of the goods. Nevertheless, parties more than often reach settlements before courts adjudicate the matters.
Conclusion
Border Detention in EU countries is a cost effective and a powerful tool available to IPR's holders. Along with market intelligence of issues such as competitors' distribution channels, it can be very effective in keeping them at bay by obstructing infringing products from entering or leaving the EU. Therefore IP strategists should work closely with all members of management to fully utilize Border Detention for their company's benefit.
Note: *IPR's (intellectual property rights), for the purpose of this article refers to:
