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United Kingdom Statutory Instruments |
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You are here: BAILII >> Databases >> United Kingdom Statutory Instruments >> The Goods Infringing Intellectual Property Rights (Customs) Regulations 2004 No. 1473 URL: http://www.bailii.org/uk/legis/num_reg/2004/20041473.html |
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| Made | 4th June 2004 | ||
| Laid before Parliament | 7th June 2004 | ||
| Coming into force | 1st July 2004 |
(2) For the purposes of these Regulations, any reference in the Council Regulation to "copyright or related right" is to be construed as a reference to "copyright, rights in performances, publication rights or database rights".
(3) These Regulations shall apply to goods which fall to be treated by virtue of Article 2(3) of the Council Regulation as being goods infringing an intellectual property right; but these Regulations shall not apply to any goods in relation to which the Council Regulation does not apply by virtue of Article 3(1) thereof.
Infringing goods liable to forfeiture
3.
Subject to paragraph (2) of regulation 4, goods infringing an intellectual property right which correspond to the description of goods contained in a decision shall, during the period specified in the decision, be liable to forfeiture in any of the situations mentioned in Article 1(1) of the Council Regulation.
Application for action
4.
- (1) If, in the course of checks carried out in relation to goods in one of the situations referred to in Article 1(1) of the Council Regulation, and before an application has been lodged by a right-holder or, if lodged, before it has been granted, the Commissioners have sufficient grounds for suspecting that goods infringe an intellectual property right, the Commissioners may, in accordance with Article 4 of the Council Regulation -
(2) If at any time during the period of suspension or detention under paragraph (1) an application is granted covering the goods, the decision shall, for the purposes of regulation 3, be taken to have applied at the time the goods entered any of the situations mentioned in Article 1(1) of the Council Regulation.
Decision to cease to have effect
5.
A decision shall have no further effect where -
Samples of goods
6.
When examining goods in accordance with Article 9(3) of the Council Regulation the Commissioners may make samples of the goods available to the right-holder at his request for the purposes of analysis and of facilitating subsequent procedures under the Council Regulation or these Regulations.
Detention, seizure, condemnation and forfeiture
7.
- (1) Subject to regulation 8, section 139[15] of, and Schedule 3 to, the 1979 Act (provisions as to detention, seizure and condemnation of goods, etc; forfeiture) shall apply in respect of any goods liable to forfeiture by virtue of regulation 3 as they apply in respect of goods liable to forfeiture under the customs and excise Acts; and, accordingly -
(2) Where in any condemnation proceedings brought by virtue of paragraph (1) any question arises as to whether or not any goods are or were liable to forfeiture under regulation 3, the burden of proof shall lie upon the party alleging that they are not, or were not, so liable.
Detention and seizure of goods infringing specified intellectual property rights
8.
- (1) Regulation 7 shall not apply in relation to goods as regards which the decision specifies as subsisting in those goods any one or more of the following intellectual property rights (whether or not they also appear to infringe any other intellectual property right) -
(2) A right-holder may, within 10 working days of his having been notified by the Commissioners of the suspension of release of such goods, or of such goods being detained, give notice in writing to the Commissioners waiving, for the purpose of both the Council Regulation and these Regulations, any intellectual property right of his in the goods, being a right mentioned in sub-paragraphs (a) to (j) in paragraph (1).
(3) The period referred to in paragraph (2) shall be 3 working days in cases where the Commissioners have suspended the release of, or detained, perishable goods.
(4) Where notice has been given in accordance with paragraph (2) -
(5) The following provisions of the 1979 Act shall apply to any goods falling within paragraph (1) as they apply in respect of goods liable to forfeiture under the customs and excise Acts -
(6) Any thing seized or detained by virtue of this regulation shall be dealt with in such manner as the Commissioners may direct; but this paragraph shall apply subject to section 139(3) and (4) of the 1979 Act (detention or seizure by a constable; things retained in the custody of the police) in the cases there mentioned.
Initiation of proceedings
9.
- (1) In the case of goods falling within paragraph (1) of regulation 8, the commencement of the proceedings described in paragraph (2) below, and only such proceedings, shall constitute the initiation of proceedings to determine whether an intellectual property right has been infringed for the purposes of the Council Regulation.
(2) The proceedings mentioned in paragraph (1) above are proceedings commenced in the relevant court by a right-holder alleging that the goods infringe an intellectual property right of his and seeking relief which that court has the power to grant after a finding of such infringement.
(3) Without prejudice to any provision of the Council Regulation, the suspension of the release of the goods, or their detention, shall cease if at any time the Commissioners -
(4) For the purposes of this regulation proceedings shall not be taken to have been commenced before -
(5) In paragraph (4), the reference to an originating process is a reference to -
(6) For the purposes of this regulation the relevant court is -
Relationship with other powers
10.
Nothing in these Regulations shall be taken to affect -
Misuse of information by a right-holder
11.
- (1) Where the Commissioners have reasonable grounds for believing that there has been a misuse of information by a right-holder the Commissioners may suspend the decision in force at the time of the misuse of information, in relation to a relevant intellectual property right, for the remainder of its period of validity.
(2) Where the Commissioners have reasonable grounds for believing that there has been a further misuse of information within three years of a previous misuse of information by that right-holder the Commissioners may -
(3) In this regulation -
Amendment of the Copyright, Designs and Patents Act 1988
12.
For subsection (3B) of section 111 of the Copyright, Designs and Patents Act 1988[17] there shall be substituted -
Amendment of the Trade Marks Act 1994
13.
For subsection (3) of section 89 of the Trade Marks Act 1994[19] there shall be substituted -
Revocations
14.
The Regulations listed in the Schedule are hereby revoked.
M J Hanson
Commissioner of Customs and Excise
New King's Beam House, 22 Upper Ground, London, SE1 9PJ
4th June 2004
| Regulations revoked | References |
| The Trade Marks (EC Measures Relating to Counterfeit Goods) Regulations 1995. | S.I. 1995/1444 |
| The Goods Infringing Intellectual Property Rights (Customs) Regulations 1999. | S.I. 1999/1601 |
| The Goods Infringing Intellectual Property Rights (Consequential Provisions) Regulations 1999. | S.I. 1999/1618 |
| The Goods Infringing Intellectual Property Rights (Customs) Regulations 2003. | S.I. 2003/2316 |
These Regulations re-enact regulations 2 to 8 of S.I. 1999/1618 amended to reflect Regulation 1383/2003, make new provisions consequential upon Regulation 1383/2003 and re-enact paragraphs 8(b) and (c) of S.I. 1999/1601. The other provisions of S.I. 1999/1601, relating to the application form, the provision of security by the applicant and the application fee, are rendered otiose by the changes introduced by Regulation 1383/2003.
These Regulations revoke and replace the Trade Marks (EC Measures Relating to Counterfeit Goods) Regulations 1995 (S.I. 1995/1444) which excluded goods covered by Regulation 3295/1994 from the operation of section 89 of the Trade Marks Act 1994. These Regulations also amend section 111(3B) of the Copyright, Designs and Patents Act 1988.
These Regulations revoke the Goods Infringing Intellectual Property Rights (Customs) Regulations 2003 (S.I. 2003/2316), which abolished fees for applications to the Commissioners with effect from 1st October 2003 and which are now otiose.
Regulations 2, 3, 7, 9 and 10 re-enact regulations 2, 3, 5, 7 and 8 of S.I. 1999/1618, amended to reflect the provisions of Regulation 1383/2003.
Regulation 4 re-enacts regulation 4 of S.I. 1999/1618, with the addition of paragraph (1)(a) and of the reference to the declarant in paragraph (1)(b).
Regulation 5 re-enacts paragraphs 8(b) and (c) of S.I. 1999/1601.
Regulation 6 is a new provision setting out circumstances in which samples of suspected infringing goods may be provided to the right-holder.
Regulation 8 re-enacts regulation 6 of S.I. 1999/1618, amended to reflect the extended scope of Regulation 1383/2003 and to provide for a 3 day period where perishable goods are involved.
Regulation 11 is a new provision setting out the sanctions which the Commissioners may impose if there has been a misuse of information by a right-holder. In all cases the Commissioners may suspend the decision in relation to a relevant intellectual property right for the remainder of its period of validity (the maximum period of validity is one year). If the right-holder has misused information within the previous three years the Commissioners may also refuse to renew the decision, or to accept an application, in relation to a relevant intellectual property right for a period of up to one year from the date of its expiry.
Regulations 12 and 13 amend section 111(3B) of the Copyright, Designs and Patents Act 1988 and section 89(3) of the Trade Marks Act 1994 to refer to Regulation 1383/2003.
Regulation 14 revokes the four Regulations referred to above and listed in the Schedule.
A full regulatory impact assessment has not been produced for this instrument as it has no impact on the costs of business, charities or voluntary bodies.
[2] S.I. 1995/751 (in relation to counterfeit and pirated goods), S.I. 1999/654 (in relation to goods infringing a patent and goods infringing a supplementary protection certificate) and S.I. 2004/706 (in relation to goods infringing Community plant variety rights and goods infringing plant breeders' rights, designations of origin, geographical indications and geographical designations).back
[4] OJ No L 003, 5.1.02, p 1.back
[5] OJ No L 227, 1.9.94, p 1.back
[6] OJ No L 196, 2.8.03, p 7.back
[8] OJ No L 302, 19.10.92, p 1.back
[12] S.I. 1996/2967, amended by S.I. 2003/2498.back
[14] OJ No L 124, 8.6.71, p 1.back
[15] Section 139(4)(c) was amended, in relation to Northern Ireland, by the Police (Northern Ireland) Act 1998 (c. 32), Schedule 4, paragraph 14.back
[16] Section 153(4) was added by paragraph 9 of Part I of Schedule 8 to the Finance Act 1981 (c. 35); section 155(1) had been amended by paragraph 29(3) of Part 2 of Schedule 4 to the Criminal Justice and Public Order Act 1994 (c. 33) from a date to be appointed but, by virtue of section 44 of the Criminal Procedure and Investigations Act 1996 (c. 25), that amendment, inter alia, is treated as never having been enacted.back
[17] 1988 c. 48; subsection (3B) was inserted by S.I. 1995/1445.back
[18] OJ No L 196, 2.8.03, p 7.back
[19] 1994 c. 26; subsection (3) was substituted by S.I. 1995/1444.back
[20] OJ No L 196, 2.8.03, p 7.back
