Department of Finance publishes IP rights guide

Ireland

The Department of Finance has published the European Communities (Customs Action against goods suspected of infringing certain Intellectual Property Rights) Regulations 2004 (SI 181/2005). These implement Council Regulation 1383/2003 and Commission Regulation 1891/2004 and are designed to deal more effectively with the prohibition of the marketing of counterfeit and pirated goods.

The customs branch of the Revenue Commissioners is designated as the competent authority to receive and process applications by rights holders. Customs authorities are empowered to seize allegedly counterfeit and trademarked goods at the point of entry and effectively halt their distribution. They will then store the suspected goods in a warehouse until it can be established whether IP rights have been infringed. Although there have been previous regulations governing this area, the new regulations are designed to simplify and harmonize IP rights holders' access to legal remedies, as well as providing mechanisms to tackle IP fraud more efficiently. The regulations essentially bring clarity to the area of counterfeit and pirated goods seizure at points of entry into Ireland, including Dublin airport and Dublin port.

Under the regulations, rights holders can lodge applications electronically as well as in writing. The application must contain all the information needed to enable the goods in question to be readily recognized by the customs authorities (ie, an accurate and detailed technical description of the goods). The application must also contain proof that the applicant holds the rights for the goods in question.

Article 9 sets out the conditions governing action by the customs authorities, as well as the criteria that the Revenue Commissioners should use to decide on a case. Where goods are suspected of infringing an IP right covered by such a decision, the customs authorities shall suspend the goods' release or otherwise detain them.

Article 16 states that where goods have been found to infringe an IP right they shall not be exported, re-exported or released for free circulation. Contravening this ban is an offence, which can result, on summary conviction, in a fine of up to €3,000.

Last year, 299 seizures of 91,407 pieces with a retail value of €2.87 million were made at Dublin port. So far this year, customs authorities have made 59 seizures in Dublin amounting to about 18,500 pieces with a consumer value of €455,000. It is hoped that rights holders will now consider customs action first when planning IP protection programmes.

Carol Plunkett, William Fry Solicitors, Dublin

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