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 欧洲专利
 
Border Detention at the European Community: a potent weapon against infringers!
欧盟海关扣押:防堵侵权的利器
作者╱北美智权法规研究组 古夏平 Charl Goussard
中文摘要翻译/北美智权 李仪 Bravo Li
2011/12/27

简介
亚洲公司在欧洲申请知识产权的数目渐增,诸多亚洲知识产权所有人常对美国国际贸易委员会(United States International Trade Commission,缩写USITC)查缉程序熟悉,却对欧盟海关规则一无所知。

海关扣押通常是保护知识产权的行动与策略上重要的部分。轰动的San-Disk案,其中意大利专利权所有者Sisvel,于2008年有效地防堵所有没有Sisvel执照的San-Disk MP3在欧洲贩卖或甚至进入欧盟,就是一项明证。

海关扣押规则是源于欧洲议会,是为了保护欧洲议会会员国的知识产权所设计出的强力工具。结果,这项工具所要保护的主要是在欧洲专利局(European Patent Office,简称EPO)的登记专利以及在商标设计内部市场调和局(Office for Harmonization in the Internal Market (Trade Marks and Designs),简称OHIM)的登记商标与设计的各个知识产权所有人。

概观
美国国际贸易委员会(United States International Trade Commission,缩写USITC)与欧盟在海关扣押上的异同比对。

边界查扣程序
海关扣押程序有四阶段:1.申请阶段; 2.海关审查:海关谕令查扣; 3.货物为海关扣留; 4.申请人提起诉讼。

提起诉讼重点
提起诉讼阶段,有几项重点须特别注意。自开始查扣,知识产权所有人有10个工作天时间可以对所宣称的侵权者提出控告。货物遭受查扣所在的国家法律将是该项侵权诉讼事件审理时所依循的准绳。若在以上时间内并未提请侵权诉讼,查扣令将会被吊销,该项货品会被准许释出。查扣令将会一直有效,直到专利诉讼结果出炉为止。被查扣的货品会依照当地国家法庭裁决的命令而处理。只要货品所有人一旦支付了保释金,货品就会由海关释放。然而,通常是侵权正反两方在法院裁决之前便达成和解。

结论
欧洲海关扣押对知识产权所有人在保护知识产权方面,可算是有效又节省成本的有效工具。随着掌握竞争者的市场情资如货品布局通路等,海关扣押藉由阻断侵权货品进入或是离开欧盟的手法,就成了非常有效的反制侵权方式。因此智权策略专家,应当密切与所有欧盟会员国的管理当局合作,藉由全面利用海关扣押的优势,以确保会员国国内企业的利益。

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:

  • Trademarks;
  • Copyrights;
  • Design Patents;
  • Patents; and
  • Plant variety rights.