The Goods Infringing Intellectual Property Rights (Consequential Provisions) Regulations 1999

Explanatory Note

(This note is not part of the Regulations)

The Counterfeit and Pirated Goods (Consequential Provisions) Regulations 1995 made provision consequential on Council Regulation (EC) No. 3295/94, laying down measures to prohibit the release for free circulation, export, re-export or entry for a suspensive procedure of counterfeit and pirated goods (O.J. L341, 30.12.94).

These Regulations make provision consequential upon the amendment of Council Regulation (EC) 3295/94 by Council Regulation (EC) No. 241/1999. It also revokes the earlier Regulations.

Council Regulation 241/1999 comes into force on 1st July 1999 and makes the following significant amendments to Council Regulation 3295/94:

(a) the categories of goods subject to the prohibition and, consequently, subject to action by the customs authorities, have been added to by including goods which infringe a patent or a supplementary protection certificate;

(b) the circumstances in which the prohibition will apply will now include goods under customs supervision (any goods entering the Community), and goods placed in a free zone or free warehouse;

(c) provision is made for a single application to seek action in one or more Member States other than that in which the application is made, but only in relation to Community trademarks.

Counterfeit and pirated goods, other than those infringing a registered design or design right, which are placed in one of the circumstances in which the prohibition applies under the Council Regulation are rendered liable to suspension, detention and forfeiture; sections 139, 144–146 and 152–155 of and Schedule 3 to the Customs and Excise Management Act 1979 (detention, seizure and condemnation of goods) are applied and additional provision is made about burden of proof similar to section 154(2)(f) of that Act.

Goods infringing a patent, a supplementary protection certificate, a registered design or design right which are placed in one of the circumstances in which the prohibition applies under the Council Regulation are rendered liable to forfeiture. The Regulations provide that in the case of goods infringing these rights only the commencement of specified court proceedings by the rights holder shall constitute a referral to the authority competent to take a substantive decision for the purposes of the Council Regulation.

The Regulations also provide that where, in respect of particular goods, a rightsholder has both a right which would come within the provisions for condemnation proceedings and a right for which condemnation proceedings are inapplicable, he may elect to waive the latter right in those goods for the purposes of both the Council Regulation and these Regulations thus permitting the matter to proceed by condemnation.

A Regulatory Impact Assessment is available, copies of which have been placed in the libraries of both Houses of Parliament. Copies of the assessment are also available from the Intellectual Property Policy Directorate of the Patent Office, Room 3.B40, Concept House, Cardiff Road, Newport NP9 1RH.