COUNCIL REGULATION (EEC) No 3842/86
of 1 December 1986
laying down measures to prohibit the release for free circulation of counterfeit goods
THE COUNCIL OF THE EUROPEAN COMMUNITIES,
Having regard to the Treaty establishing the European Economic Community and in particular Articles 113 and 235 thereof,
Having regard to the proposal from the Commission (1),
Having regard to the opinion of the European Parliament (2),
Having regard to the opinion of the Economic and Social Committee (3),
Whereas the marketing of goods bearing a trade mark without authorization, hereinafter referred to as 'counterfeit goods', causes considerable prejudice to lawabiding manufacturers and traders and misleads consumers; whereas such goods should as far as possible be prevented from being placed on the Community market and measures should be adopted to deal effectively with this unlawful activity without impeding the freedom of legitimate trade; whereas this objective is also being pursued through efforts being made along the same lines at international level;
Whereas insofar as counterfeit goods are imported from third countries it is important to prohibit their release for free circulation in the Community and to introduce an appropriate procedure enabling the customs authorities to act to ensure that such a prohibition is observed under optimum conditions;
Whereas action by the customs authorities must consist in suspending the release for free circulation of goods suspected of being counterfeit for as long as is necessary to enable it to be determined whether the goods are actually counterfeit;
Whereas the objective to be achieved by the introduction of such a procedure does not require the drawing up of Community provisions either as regards the designation of the authority competent to determine whether the goods entered for free circulation are counterfeit or as regards the procedures to be followed for referral to that authority; whereas in the absence of Community regulations on the subject the said competent authority should furthermore decide cases submitted to it with reference to the criteria which are used to determine whether the goods produced in the Member State concerned infringe the rights of the owner of a trade mark;
Whereas, on the other hand, it is necessary to determine the measures to be applied to goods entered for free circulation where it is established that they are counterfeit; whereas those measures must not only deprive those responsible for the importation of such goods of the economic benefits of the transaction but also constitute an effective deterrent to further transactions of the same kind;
Whereas in order to avoid serious disruption to the clearing of goods contained in travellers' personal luggage or sent in small consignments of a noncommercial nature, it is necessary to exclude from this Regulation goods which may be counterfeit which are imported from third countries within the limits laid down by Community rules in respect of relief from customs duty and application of the standard rate of duty specified in Title II C of the Preliminary Provisions of the Common Customs Tariff;
Whereas uniform application of the common rules laid down by this Regulation must be ensured and to that end a Community procedure must be provided enabling measures implementing these rules to be adopted within appropriate periods;
Whereas this Regulation does not affect national provisions applicable to goods released for free circulation which are not counterfeit goods within the meaning of this Regulation but which would, if marketed, affect an intellectual property right in the Member State concerned;
Whereas the provisions of this Regulation are designed to discourage international trade in counterfeit goods; whereas the specific provisions of the Treaty do not confer on the Community institutions the power to adopt all the measures which are necessary to achieve this objective, and in particular measures to which goods found to be counterfeit must be subjected; whereas it is therefore necessary to base the provisions of this Regulation also on Article 235,
HAS ADOPTED THIS REGULATION: TITLE I General Article 1
1. This Regulation lays down:
2. For the purposes of this Regulation:
3. This Regulation shall not apply to goods which bear a trade mark with the consent of the owner of that trade mark but which are entered for free circulation without the owner's consent.
Nor shall it apply to goods entered for free circulation which bear a trade mark under conditions other than those agreed with the owner of that trade mark. TITLE II Prohibition of the release for free circulation of counterfeit goods
Article 2 The release for free circulation of goods found to be counterfeit on completion of the procedure provided for in Article 5 of this Regulation shall be prohibited.
TITLE III Applications for action by the customs authorities Article 3
The application must specify the length of the period for which the customs authorities are requested to take action.
The applicant may be charged a fee to cover the administrative costs incurred in dealing with the application.
3. The authority with which an application drawn up pursuant to paragraph 2 has been lodged shall take a decision on the application and shall notify the applicant in writing of that decision.
Where the application is granted, it shall specify for what period the customs authorities may take action. This period may, upon application by the trade mark owner, be extended by the authority which took the initial decision.
Member States may require a trade mark owner, where his application has been accepted, or where the release of a consignment of goods has been suspended pursuant to Article 5 (1), to provide a security to cover any liability on his part visàvis the importer where the procedure initiated pursuant to Article 5 (1) fails to be continued due to any act or omission by the trade mark owner or where the goods in question are subsequently found not to be counterfeit.
In addition, the trade mark owner shall be obliged to inform the authority referred to in paragraph 1 should the trade mark cease to be validly registered. Moreover, the competent authority may require the applicant to bear the costs incurred in keeping the goods under customs control pursuant to Article 5 or in bringing a legal action to which the trade mark owner is not a party and to provide a security in order to ensure payment of that sum.
4. The Member States may appoint the customs authorities themselves as the authorities competent to decide on the application referred to in this Article.
Article 4 The decision granting the application by the trade mark owner shall be forwarded immediately to the customs offices of the Member State which are liable to be concerned with imports of the counterfeit goods referred to in the application.
TITLE IV
Conditions governing action by the customs authorities and by the authority competent to decide on the case Article 5
Article 6
Provisions applicable to goods found to be counterfeit goods Article 7
1. Without prejudice to the other rights of action open to the owner of a trade mark which has been found to be infringed, Member States shall adopt the measures necessary to allow the competent authorities:
The following, inter alia, shall not be regarded as having such effect:
reexporting the counterfeit goods in an unaltered state;
other than in exceptional cases, simply removing the trade marks which have been affixed
to the counterfeit goods without authorization; subjecting the goods to a different customs procedure.
Final provisions
Article 8
Article 9
This Regulation shall not apply to goods contained in travellers' personal luggage or sent in small consigments of a noncommercial nature within the limits laid down in respect of relief from customs duty and application of the standard rate of duty specified in Title II C of the Preliminary Provisions of the Common Customs Tariff.
Article 10 This Regulation shall apply mutatis mutandis to goods bearing without authorization a trade mark validly registered in respect of such goods in accordance with Community rules as soon as such rules enter into force. The owner of the trade mark may, in that case, lodge the application referred to in Article 3 with the duly empowered authority.
Article 11
The Commission shall communicate this information to the other Member States.
The details of the information procedure shall be drawn up in the framework of the implementing provisions in accordance with paragraphs 1 and 2.
4. Within three years following the entry into force of this Regulation, the Commission shall, on the basis of the information referred to in paragraph 3, report to the European Parliament and the Council on the operation of the system instituted thereunder and shall propose such amendments and additions as need to be made thereto.
Article 12
This Regulation shall enter into force on 1 January 1988.
This Regulation shall be binding in its entirety and directly applicable in all Member States.
Done at Brussels, 1 December 1986.
For the Council
The President