Parliament adopts IP rights enforcement directive

European Union

The European Parliament has adopted the proposal for a directive on measures and procedures to ensure the enforcement of IP rights after reaching a compromise with the European Council of Ministers. The directive is likely to strengthen significantly the position of IP rights holders.

The text adopted by the Parliament does not include the amendment proposed by the Committee on Legal Affairs and the Internal Market excluding patents from the scope of the directive. It also includes a number of changes to the European Commission's proposed draft of the directive.

The adopted text diverges from the original proposal in the following ways:

  • The provisions relating to the seizure of evidence, the right of information and the precautionary seizure of property are now applicable to infringing acts committed "on a commercial scale", rather than acts carried out "with commercial purposes" or causing "significant harm to the rights holder" (see Committee requests changes to piracy directive). The directive explicitly allows member states to apply these measures to other acts.

  • The commission's draft provided that the responsible authorities may order the communication or seizure of banking, financial or commercial documents - subject to data protection law. The proposal adopted by the Parliament has narrowed down this possibility of seizure to documents held by the alleged infringer.

  • The directive will give courts the right to order the seizure of infringing goods and all relevant evidence relating to the alleged infringement, (i) even before proceedings on the merits of the case have started, and (ii) even if there is no demonstrable risk that evidence may be destroyed. If such a risk of evidence destruction exists, the seizure may be ordered before the defendant has been heard. The requirement that the applicant lodges an adequate guarantee to ensure compensation for any prejudice suffered by the defendant was broadened to include equivalent assurances, which are to be determined by national law.

  • The infringer and/or any other person found in the possession of infringing goods or using infringing services on a commercial scale can be ordered to provide information on the origin of such goods or services and any relevant distribution networks during infringement proceedings and in response to a justified and proportionate request by the claimant. However, the proposal adopted specifies that this right of information must comply with the statutory provisions governing the protection of confidentiality of information sources or the treatment of personal data.

  • In cases of infringement committed on a commercial scale, the member states will ensure that, if the injured party demonstrates circumstances likely to endanger the recovery of damages, the judicial authorities may order the precautionary seizure of the alleged infringer's property, including the blocking of its bank accounts and other assets. To this end, the competent authorities may order the communication of bank, financial or commercial documents or appropriate access to the relevant information.

  • The proposed possibility to claim damages set at double the royalties or fees that would have been due if the infringer had requested authorization to use the mark, did not find its way into the final document. However, the judicial authorities may, in appropriate cases, set the damages as a lump sum that will be at least the amount of the royalties or fees that would have been due.

  • The original provisions on criminal sanctions for intentional infringements for commercial purposes, as well as on the legal protection of technical devices, have been removed.

The council will adopt the proposal in the next few weeks. Member states will then have 24 months to transpose the directive into national law.

Alexander Bach, Bardehle Pagenberg Dost Altenburg Geissler, Munich

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