ECTA Survey on national authorities engaged in the fight against counterfeiting

Transcription

1 6 September 2012 ECTA Survey on national authorities engaged in the fight against counterfeiting 1. Introduction The Regulation (EC) n 1383/ provides for the intervention of the Customs Authorities of each Member State where there is suspicion of infringing goods in a customs situation. Up to now the Customs Offices of all Member States have proved their efficiency as to the seizure of infringing goods and there is a list of central contact points that right-holders can approach with their application for customs action and for the communication of urgent information 2. However, what happens in the case infringing goods enter the country and are released in the market or when infringing goods are locally produced? Are there any other control mechanisms and organizations that are allowed and have competency to intervene and take action whenever they come across an IP right infringement and more specifically when they come across traffickers and IPR infringing goods? Taking Greece as an example, it has been recently observed that other authorities (such as the police) have become somewhat more sensitive as to the counterfeit issue resulting in a number of successful raids and seizures of counterfeit goods in warehouses. Still, it remains to be answered which circumstances and what national legal frame allow the specific authorities to take action and to which extent. Furthermore, we need to check to which extent the participation of the right holder seems necessary for such actions to be successfully completed. These issues are reflected in the following questions: (a) Which are the competent authorities and/or official organizations that have the right to take action once they became aware of an infringement of IP rights in the form of IPR infringing goods besides the Customs Authorities in your country? In which countries customs have the competence to act on the internal market? 1 Council Regulation (EC) No 1383/2003 of 22 July 2003, OJ L 196/7, The Regulation may be found here: 2 For applications for customs action : lders/contactlist_intervention_en.pdf For new trend and red alert forms : lders/contacts_en.pdf ECTA Secretariat, Rue des Colonies 18/24, 9th Floor, BE- Brussels, Belgium Tel 32/ Fax 32/ ecta@ecta.org Internet A company limited by guarantee. Reg. in England and Wales No Reg. address: 15 Southampton Place, London WC1A 2AJ, England. VAT No. BE Copyright 2012 ECTA European Communities Trade Mark Association

2 (b) Which are the legal provisions and laws under which each separate body taking action in such cases may conduct investigations, raids and take further action? Please distinguish between administrative (customs) proceedings and criminal proceedings laws. (c ) Is the filing of a complaint/prosecution/application by the right-holder necessary for each separate agency to take action against infringing goods, or may such an involvement by these bodies be initiated ex officio? (d) Does your national law provide for the necessity of a prosecution against each and every specific counterfeiter in order for such actions to take place or the police and other bodies have the right to take action automatically? (e )If the answer to the previous question is yes, is this prosecution necessary for all IP rights (trade mark, patent, design, copyright, etc)? (f) Can an IPR infringement (in the form of an infringing product/slavish imitation/look alike) in your country considered and handled as forgery (offence?) by the penal Courts? If so, what are the conditions? (g) Is the crime of forgery punished in your country upon an ex officio prosecution or the filing of a complaint (prosecution) by the right holder is necessary? (h) Do these different agencies/bodies cooperate in order to effectively take action? (i) What is the procedure followed (after such agency/body proceeds to a raid or seizure) for the destruction of the seized goods? Is a decision for destruction necessary or is the consent of the products owner necessary and if yes what happens in the case that the owner cannot be contacted? (j) Is there a common database for information on IPR infringement, contact details of right-holders, etc.? 2. Questionnaire (a) Which are the competent authorities and/or official organizations that have the right to take action once they became aware of an infringement of IP rights in the form of IPR infringing goods besides the Customs Authorities in your country? In which countries customs have the competence to act on the internal market? Austria The Austrian police force will intervene if it becomes aware of an infringement which can be said to be forgery or fraud. There is a special task force dealing with so-called economic crimes. It is organised within the Bundeskriminalamt of the Austrian Federal Ministry for Internal Affairs. Although not one of its core duties, the taking action against infringers could be subsumed under the fraud and forgery department. Customs can also intervene in the Austrian market, if it by chance, finds pirated goods, usually during transport. Belgium 2

3 In Belgium the law of 15 May 2007 entrusts the following agencies with the competence to take action upon becoming aware of an infringement of IP rights: 1. Police services (although there is no longer a central service within the Belgian Federal Police in charge of the coordination of IPR infringements), acting either ex officio or following instructions from public prosecutors offices or examining magistrates; 2. Economical Control Services (Federal Public Service Economy, SMEs, Self- Employed and Energy, belonging to the Ministry of Economy); 3. Customs authorities, which have jurisdiction to undertake controls both at the EU s external borders and within the internal market of Belgium. Bulgaria In Bulgaria, the following bodies are competent to intervene in matters related to the counterfeiting: 1. Police; 2. General Directorate for Combating the Organized Crime (which is a Directorate of the Ministry of Interior); 3. Public Presecutor; 4. Patent Office; 5. Customs (in excise storehouses). Cyprus In Cyprus, the following agencies may intervene in the counterfeit problem: Police ( Financial Crime Unit ) and Customs authorities. Czech Republic The Czech Trade Inspection has competence in IP infringement under Section 23 of the Czech Consumer Protection Act, No. 634/1992. The Customs also have competence in IP infringement under the same provision. Denmark In Denmark the following bodies are competent in matters related to the counterfeiting: 1. Police; 2. Public Prosecutor; 3. Public Prosecutor for Serious Economic Crime (Statsadvokaten for Særlig Økonomisk Kriminalitet). Estonia The Danish Customs does not have competence to act on infringement of IP rights occurring in the internal market in Denmark. In Estonia, the following agencies may intervene in the counterfeit problem: 1. Police; 2. Tax and Customs Board if IPR infringing goods have been imported into Estonia. 3

4 Finland Customs authorities do not have the competence to act against the infringing goods which have been manufactured in Estonia. The competent authorities in this regard in Finland are the Customs and the Police. France In France, the following authorities may intervene: 1. Police; 2. Gendarmerie (Police force attached to the Ministry of the Interior); 3. DGCCRF (General Agency for Competition, Consumer Affairs and Repression of Fraud, administration attached to the Ministry of Economy); In France, Customs have the competence to act on the internal market. Germany In Germany customs authorities as well as the Police are competent in taking action against an infringement of IP-rights. Customs are part of the Federal Ministry of Finance. Apart from the customs offices the Customs Criminal Logical Office, based in Cologne is competent for prosecution against organized and more serious customs crime. Greece In Greece, the following agencies may intervene in the counterfeit problem: 1. Police; 2. Economic Crime Prosecution Body, specific body belonging to the Ministry of Economy; 3. Municipal police. Hungary In Greece, the Customs Authorities have no competence to act on the internal market. They are only competent to act when imported products enter the country and until such products are delivered to the importer. In Hungary, the following bodies are competent to intervene in the matter of counterfeiting: 1. Hungarian National Tax and Customs Office; 2. Hungarian Prosecution Authorities. In Hungary domestic anti-counterfeiting activities are managed by the National Tax and Customs Office, which is also responsible for the implementation of the Regulation (EC) n 1383/2003. Ireland In Ireland the Gardaí (police force) may intervene once they become aware of an infringement of IP rights in the form of IPR infringing goods. You might note that, in practice, the Gardaí tend only to take action on the request of right holders or on the 4

5 basis of intelligence provided by right holders. It is the Director of Public Prosecutions that ultimately decides who will be prosecuted for any criminal offences. Irish customs only have authority to act at Irish points of entry and in respect of goods originating from outside the EEA. Italy In Italy, the following agencies may intervene in anti-counterfeit activities: 1. Police; 2. Municipal police; 3. Carabinieri (a body belonging to the Armed Forces); 4. Guardia di Finanza (revenue police); 5. INDICAM Institute of Centromarca for fighting counterfeit; 6. CNAC National Anticounterfeit Council; 7. Directorate General for the Fight against Counterfeiting - Italian Patent and Trademark Office The Custom Authorities do not have the competence to act on the internal market. Latvia In Latvia, the following official bodies have a power to intervene in the counterfeit problem: 1. Police (Ministry of Internal Affairs); 2. Prosecutors Office; 3. State Revenue Service (Ministry of Finance); 4. Consumer Rights Protection Centre (Ministry of Economics); 5. Health Inspectorate (Ministry of Health); 6. Food and Veterinary Service (Ministry of Agriculture). The Customs Office does not have the competence to act on the internal market. Lithuania In the Republic of Lithuania competent authorities that have the right to take actions against goods infringing IPR besides Customs Authorities are Police Authorities (in criminal and administrative procedures). In criminal cases such actions may be initiated and taken also by the Prosecutor s Office. Customs Authorities of the Republic of Lithuania has the competence to act against goods infringing IPR only in the territory of the Republic of Lithuania. Lithuanian Custom s authorities do not have any treaties with other countries from the internal market which could enable Lithuanian Customs authorities to act in territories other than the Republic of Lithuania. Luxembourg In Luxembourg, the Grand-Ducal police may intervene. Customs do not have competence to act against infringing goods on the Luxembourg market. 5

6 Malta The competent authorities in Malta to take action on infringement of IPRs are the following: - Police authorities; - Customs authorities. Customs have the authority to act on the internal market only in situations of crossborder movement of goods. Netherlands The following official bodies have a power to intervene in the counterfeit problem: 1. Dutch police: the KLPD (National Police Services Agency); 2. Nationale Recherche (National Investigation Service) and the municipal police; 3. FIOD-ECD: Fiscal Intelligence and Investigation Service/Economic Investigation Service, which has a special team for intellectual property matters. Paraguay In Paraguay, all IP crimes are of public nature. Therefore in any IP crime scenario the only entity entitled to take initial action as a general rule are the IP Prosecution Units. There is an IP Prosecution Unit in every judicial region. Customs authorities however are also entitled to order border measures subject to a specific set of rules and subject to an immediate judicial revision. The Police acts as an assistant to the IP Prosecution Unit and the Judges. In a civil scenario as opposed to a criminal scenario the affected party is the one entitled to take the initial action. Poland The prosecutor is in charge of the investigation. Other bodies that may conduct certain steps during the investigation concerning infringements of IP rights are: 1. Police; 2. Customs authorities; 3. Border guards. Portugal Since they are criminal offences, measures can be taken against infringements of IP rights by any entity or individual person classified by law as a Criminal Police Body (CPB). CPBs are defined as all police agents and entities responsible for carrying out any acts ordered by a judicial authority or stipulated under the Code of Penal Procedure. The action of the Portuguese Customs (who are not classified as a Criminal Police Body CPB) with regard to IP enforcement is limited to border measures and these authorities do not have any powers to intervene within Portuguese territory. The abovementioned Criminal Polce Bodies are the following: 1. Autoridade para a Segurança Alimentar e Económica (Authority for Food and Economic Safety), or ASAE; 2. Guarda Nacional Republicana (National Republican Guard), or GNR; 3. Polícia de Segurança Pública (Public Security Police), or PSP; 6

7 4. Polícia Judiciária (Criminal Police), or PJ. Basic information on each of these Police bodies and/or definitions can be consulted on the Portal of the Anti-Counterfeiting Group (see question 2h. below). Clearly and by far, the two Police bodies that are most active in the enforcement of IP rights are the ASAE and the GNR. Mention should also be made of another Police body, which specialises in the prevention and repression of Copyright infringements, which is Inspecção-Geral das Actividades Culturais (Department of Cultural Activities), or IGAC. Romania The Police Authority has the right to take action besides the Customs Authorities. If the seizure is at the border, the Border Police Department opens the criminal files and carries out the steps. If the seizure is inside the country, the Regular Police Department carries out the same activities for any type of infringement. Slovakia Besides the Customs Authorities, the following official bodies have the right to intervene in case of counterfeiting: 1. Police of the Slovak Republic; 2. The Slovak Trade Inspection. In Slovakia, the Customs Authorities, besides being empowered to act on the borders, it has the competence to act in the internal market. Slovenia In Slovenia, the following official bodies have a power to intervene in the counterfeit problem: 1. Police; 2. Market Inspectorate; 3. Public Prosecution Service. South Corea The following official bodies have a power to intervene in the counterfeit problem: 1. Korean Police Authorities; 2. Korean Public Prosecutor s office; 3. Korean Intellectual Property Office (KIPO) (Judicial Police Squad); 4. Korean Customs do not have the competence to act on the Korean internal market. Spain In Spain, the following agencies may intervene in the counterfeit problem: 1. Guardia Civil; 2. Policia Nacional; 3. Regional Police Policia Autonomica ; 4. Municipal Police 7

8 Sweden The following agencies may intervene in the counterfeit problem: 1. Swedish Police Authorities; 2. Swedish Prosecution Authorities (There are three Public Prosecutors in Sweden specialized in infringement of IP rights). The Swedish Customs do not have the competence to act on the Swedish internal market. Switzerland The police as well as the public prosecutor of the different Swiss Cantons can take action. In principle, the Customs do not intervene in the internal market. Turkey In Turkey, the following agencies may intervene in the counterfeit problem: 1. Police; 2. Specialized Police Department for IP infringement cases. Ukraine Customs authorities do not have the competence to act within the internal market. In Ukraine, the following agencies may intervene in the counterfeit problem: 1. Police; 2. Prosecutor; 3. State tax service; 4. State inspectors on intellectual property of the State Service for Intellectual Property of Ukraine; 5. Antimonopoly committee of Ukraine United Kingdom Within the UK, the following law-enforcement agencies may intervene in any counterfeit activities: 1. Trading Standards Offices, based within local municipal authorities; 2. Police. The UK Customs Authorities do not have the power to take action within the UK. 8

9 (b) Which are the legal provisions and laws under which each separate body taking action in such cases may conduct investigations, raids and take further action? Please distinguish between administrative (customs) proceedings and criminal proceedings laws. Austria The action directed against infringing products will be based on the infringement provisions in the Austrian IP laws (such as the trademark protection act) as well as the Austrian anti-counterfeiting act. For the police, the action will be based on the code of criminal procedure. Belgium The Belgian Law of 15 May 2007 regarding the punishment of counterfeit and piracy of intellectual property rights contains rules that apply, on one hand, to the intervention of the customs authorities under regulation (EC) n 1383/2003 and, on the other hand, to the procedures that are to be applied within the internal market of Belgium. For the Belgian territory, the law provides for criminal sanctions to be applied in cases of IPR infringements, a warning procedure (whereby infringers are simply put on notice, without there being any further consequences if they comply with the warning), a settlement procedure (whereby criminal prosecution can be avoided subject to the payment of a transaction fee with the authorities). This law also contains the rules applicable to the investigations that can be conducted by the different law enforcement bodies. Implementing rules are contained in a royal decree of 20 October Copyright and related right infringements are sanctioned by the Law of 30 June Bulgaria - IP laws - Law on Ministry of Interior - Criminal Procedures Code - Law on Customs Cyprus The Customs intervene in the marketplace on the basis of the Directive 1383/2003 (extensive interpretation) and the Police ( Financial Crime Unit ) intervenes on the basis of the specific laws on trademarks, patents, designs, copyright (criminal measures for enforcement), etc. Czech Republic The relevant laws for administrative proceedings are the Czech Consumer Protection Act, No. 634/1992 and the Czech Anti-Piracy Act No. 191/1999 implementing EC Regulation 1383/2003. The relevant law for criminal proceedings is the Czech Criminal Code No. 40/2009 and Czech Criminal Code of Procedure 141/

10 Denmark 1. Police: Act pursuant to the Penal Code, Police Act and Code of Judicial Procedure. (Criminal Proceedings); 2. Public Prosecutor and the Public Prosecutor for Serious Economic Crime: Act pursuant to the Penal Code and Code of Judicial Procedure and the Prosecution Regulation. (Criminal proceedings). Estonia 1. Police: act pursuant to the Penal Code and the Code of Criminal Procedure; 2. Customs: act pursuant to the Customs Act, the Penal Code (general part) and the Code of Misdemeanour Procedure. Finland Both the Police and the Customs operate under the Criminal Investigation Act (449/1987, as amended). According to Section 2, the Police or the Customs must conduct a criminal investigation when there are reasons to suspect that a crime has been committed. France 1. Customs take action on the basis of the Customs Code (administrative proceedings). Based on Article 63ter, Customs can conduct investigation in professional or commercial premises. In 1999, the SNDJ was created, a Customs body authorized to conduct criminal investigations under the Criminal Procedure Code. They can act on the request of the investigating judge or the Public Prosecutor, following an administrative Customs finding. 2. The DGCCRF s aim is to ensure the effective operation of the internal market. It bases its action on the Consumers Code. In particular, according to Article 9 of the Law No of 31 December 1989, infringements to articles L.716-9, L and L of the Intellectual Property Code can be investigate by DGCCRF s agents under the conditions laid down in the Consumer Code, Title II. 3. Police and Gendarmerie act on the basis of the Intellectual Property Code which makes IPR infringement a criminal offense. Germany Action by customs is based on Directive 1383/2003 and on specific customs provisions in connection with specific substantive provisions of the German IP-laws. The Police acts on the basis of the Penal Code, the Code of Criminal Procedure, the Police Act and the substantive provisions of German IP-laws. Greece 1. Customs: they act under Regulation 1383/1993 and Laws 1165/1918 & modifications, such as 3583/2007; 2. Police & Public Prosecutor: they act under the Penal Code and other specific penal provisions included in various laws; Economic Crime Prosecution Body: it takes action on the basis that normally the counterfeiters and specifically the traders of such goods do not follow legitimate 10

11 procedures of fulfilling their tax and fiscal obligations, e.g. as to the issuance of invoices, tax declaration etc. They act under the tax legislation. Hungary Administrative (customs) proceedings are based on Regulation (EC) n 1383/2003: Government Decree No 98 of 2004, laying down provisions for the implementation of measures concerning the import into the Community, export and re-export from the Community, of goods suspected of infringing certain intellectual property rights. Criminal proceedings are based on the Act No 4 of 1978 on the Criminal Code and Act No 19 of 1998 on the Criminal Prosecution Code. Ireland Criminal Offences: 1. Trade Marks - Section 92 of the Trade Marks Act, 1996 ( TMA ) makes provision for criminal prosecution where a counterfeiter contravenes this section. 2. Industrial Designs - Sections 66 to 70 of the Industrial Designs Act, 2001 ( IDA ) make provisions for criminal prosecution when a counterfeiter contravenes this section. 3. Copyright - Sections 140 and 141 of the Copyright and Related Rights Act, 2000 (CRRA) make provision for criminal offences. Search, Seizure and Delivery Up: 1. Copyright: Section 142 and Section 260 of the CRRA deals with delivery up in criminal proceedings. Section 142 and Section 260 provide that a court, on conviction of a person or being satisfied that there is a prima facia case to answer, may in certain circumstances order delivery up of the infringing article or device to the right holder or to such other person as the court may direct.section 261 of the CRRA permits a District Court judge to order the entry and search of premises in limited circumstances to allow, inter alia, the seizure of items where it is suspected that an offence has been committed, to make an inventory or prepare other evidence of infringement and to require any person found there to give his or her name and address. 2. Industrial Designs: Section 69 of the IDA permits a court, on conviction of a person or being satisfied that there is a prima facia case to answer, to in certain circumstances order delivery up of the infringing article or product to the right holder or to such other person as the court may direct.section 70 of the IDA permits a District Court judge to order the entry and search of premises in limited circumstances to allow, inter alia, the seizure of items where it is suspected an offence has been committed, to make an inventory or prepare other evidence of infringement and to require any person found there to give his or her name and address. Civil Infringements: 1. Trade Marks: Sections 19, 20, 23 and 25 of the TMA outline a number of remedies available in respect of trade mark infringement. Section 19 gives the High Court the power to order an offending sign be erased, removed or obliterated from infringing goods or for infringing articles to be destroyed. Section 20 permits the Circuit Court or High Court to make an order for delivery up of the infringing goods. Section 23 gives the High Court and 11

12 Circuit Court the power to order destruction or forfeiture of goods which have been seized under Section 20 above. Section 25 permits a District Court judge to order the entry and search of premises in limited circumstances by a member of the Gardai to seize infringing goods without a warrant and bring them before a court. 2. Copyright: Sections 131 and 255 of the CRRA permits a copyright owner to apply to the appropriate court for an order that the infringing copy, article or device be delivered up to him or her or to such other person as the court may direct.sections 132 and 133 of the CRRA permit a copyright owner to apply to the District Court for an order that infringing articles be seized and confiscated. Section 145 of the CRRA permits an application to be made to the appropriate court for an order that an infringing copy, article or device delivered up under Sections 131 or 142, or seized and detained under Sections 132 or 143, be forfeited to the copyright owner, or destroyed or otherwise dealt with as the court may direct, and the court may make such an order or such other order as it thinks fit. 3. Industrial Designs: Section 61 of the IDA permits a design owner to apply to the appropriate court for an order that the infringing product or article be delivered up to him or her or to such other person as the court may direct. Section 63 of the IDA permits a design owner to apply to the District Court for an order that infringing products or articles be seized and confiscated. Section 63(2) of the IDA permits the District Court to order that the product or article to be destroyed or to be delivered up to the registered proprietor or otherwise dealt with as the Court may think fit. Section of 72 of the IDA provides that an application may be made to court that the goods seized may be destroyed. Notice must be served on persons having an interest in the product or article concerned, and any such person may appear in proceedings for an order under this section whether or not he or she was served with notice, or appeal against any order made, whether or not he or she appeared in the proceedings concerned.anton Pillar orders are a tool used by right holders in the fight against counterfeiters. However, Anton Pillar orders are only of assistance where Irish Customs have not taken action. Anton Pillar orders are available in circumstances where it is important to ensure that evidence in the defendant s possession is not removed or destroyed so as deliberately to deprive a plaintiff of evidence required to prove this case. Therefore, a court, in granting an Anton Pillar order, effectively orders the detention, custody, or preservation of the goods which are the subject matter of an action, as well as the inspection of any goods which are in the possession of any of the parties to the action. If a defendant refuses access to his premises the plaintiff will have to return to court and seek an order for contempt. A Mareva injunction is also available whereby the defendant is restrained from disposing of moneys or moving the subject matter of the action out of the jurisdiction until trial or further trial. Italy In Italy, Articles of the Criminal Code and the general rules in the criminal proceedings are applicable. In relation to the custom procedure, same is based on the EU rules, which have been adapted also in Italy and transformed into Law 286 of November 24,

13 Latvia In Latvia, all the mentioned bodies may take actions on the basis of Code of Administrative Violations and Administrative Procedure Law upon the fields of their responsibility. Code of Administrative Violations provides for administrative liability for infringement of copyright and related rights, as well as infringement of patent, design or trademark rights and separately for activities of counterfeit goods. Criminal proceedings may be initiated by Police or Prosecutor s Office (upon request). Lithuania 1. Legal provisions and laws regulating administrative (customs) proceedings: Law on Customs of the Republic of Lithuania, April 27, 2004, No IX Article 9 establishes that one of the Customs function is to identify criminal acts related to custom s matters and to start criminal investigation. Article 21 provides for Customs officers the right to pursue suspected infringers, inspect such infringers, their belongings, documents, financial data, premises and vehicles, and initiate criminal investigation. It should also be mentioned that the Article 214(27) of the Code of Administrative Offences of the Republic of Lithuania provides administrative liability against trademarks, designs and patents infringements. The administrative liability is imposed by the Police or Customs authorities. 2. Legal provisions and laws regulating criminal proceedings: Criminal Procedure Code of the Republic of Lithuania, March 14, 2002, No IX According to the Article 164, criminal investigation is conducted by the Police authorities under Prosecutors supervision. However, as mentioned before Prosecutor may decide to conduct the investigation himself. Luxembourg The Grand-ducal police acts on the basis of the different intellectual property laws and the Criminal Code which provide criminal sanctions for some IPR infringements: 1. Articles 184, 187 and 191 of the Criminal Code for trademark infringements 2. Articles 82 to 86 of the law of 18 April 2001 on copyright and related rights for copyright and related rights infringements. Malta The Police authorities take criminal action on the basis of the Maltese Criminal Code (Chapter 9 of the Laws of Malta), the Trademarks Act (Chapter 416 of the Laws of Malta) and the Patents & Designs Act (Chapter 417 of the Laws of Malta). The Customs authorities take administrative action on the basis of EC Regulation 1383/2003 and the Intellectual Property Rights (Cross-Border Measures) Act (Chapter 414 of the Laws of Malta). Netherlands 1. Dutch Criminal Code (criminal) ; 2. Dutch Economic Offences Act (criminal); 13

14 3. Benelux Treaty on Intellectual Property (civil); 4. Dutch Copyright Act (civil); 5. Dutch Patent Act 1995 (civil). Paraguay These provisions are essentially contained in the Paraguayan Penal Code, the Procedural Penal Code and the Trademark Law or Copyright Law. As far as administrative proceedings, Customs also has its own regulations, which do not prevail over the above mentioned Codes, but they complement them. Customs has a Trademark Registry. Poland Code of Criminal Procedure constitutes legal framework for actions taken by the prosecutor, the police and other bodies entitled to conduct investigations. Portugal The general basis for the intervention of the Criminal Police Bodies (CPBs) is contained in Article 55(2) of the Code of Penal Procedure, which provides that it is incumbent upon the CPBs even on their own initiative, to gather information on crimes and prevent as far as possible their consequences, discover their perpetrators and take the urgent action necessary for obtaining evidence. To supplement this general provision, the organic laws of each of these Police bodies confirm their competence to intervene, even in an ex officio capacity, in the prevention and repression of criminal activities. Romania The basis of this wider range is the Article 1 a) of the Law No. 344/2005 regarding the measures to be taken during custom clearance operations against goods found to have infringement intellectual property rights according to which the Law is applicable to the goods that could infringe an intellectual property right when they are entered or they exit Romanian territory including from or to free zones or free warehose. The Police Authority has the capacity to investigate any violation of rights according to their specific laws that exceed the scope of this mapping. Slovakia Administrative/Customs proceedings: Act No. 200/2004 Coll. on measures against IPR infringement in import, export and re-export of Goods Art. 6 (1) If the goods are subject to customs supervision and if there is a suspicion that the intellectual property rights may be infringed, the Customs Office (the "Office") may request the authorized person to provide information necessary for confirmation of such suspicion. (2) The Office shall issue a written decision regarding the seizure of goods under paragraph 1. (3) An appeal against the decision on seizure of goods suspected of infringing intellectual property rights may be filed by the holder of the goods within three 14

15 working days from the receipt of the decision. Appeal against the decision shall not have suspensory effect. (4) If the authorized person does not file an application or if the seizure of goods is no longer needed for further proceedings and if the forfeiture or its confiscation or destruction is not possible (according to 10), the office shall return the goods to the holder. (5) If this Act does not provide otherwise, the procedure of the Office shall be governed by a specific regulation. (The Customs Act No. 199/2004 Coll.). Act No. 128/2002 Coll. on State Control of the Internal Market in Consumer Protection Matters as amended An inspector of the Slovak Trade Inspection may prohibit the sale of infringing goods, and is also authorized to confiscate the goods and store them at the expense of the controlled person. Criminal proceedings: Criminal Code No. 300/2005 Coll. Slovenia Police act pursuant to Criminal Code, Police Act and Criminal Procedure Act. Proceedings can be classified as criminal. Market Inspectorate acts pursuant to Competition Protection Act, Inspection Act and Market Inspection Act. Proceedings can be classified as administrative and minor offence. Market inspectorate may in certain cases of minor offences impose fines. With regard to IPR infringements that is less likely. Public Prosecution Service acts pursuant to Criminal Procedure Act and State Prosecutor Act. Proceedings can be classified as criminal. South Korea 1. Criminal proceedings: The Criminal Procedure Code and The Act on the Persons Performing the Duties of Judicial Police Official and the Scope of their duties (SJPO Act); 2. Administrative proceedings: The SJPO Act. Spain 1. Ley 17/2001 de 7 de diciembre, de marcas (Trade Mark Act), of 8 December 2001; 2. Spanish Criminal Code; 3. Spanish Criminal Procedural Law ; 4. Local administrative police provisions. Sweden 1. Police: act pursuant to the Penal Code, Police Act and Code of Judicial Procedure. (Criminal Proceedings); 2. Prosecutors: act pursuant to the Penal Code and Code of Judicial Procedure and the Prosecution Regulation. (Criminal proceedings). 15

16 Switzerland The action directed against infringing products will be based on the criminal provisions of the Swiss IP laws (such as the trademark act) and on the Swiss Criminal Code. The rules of procedure are governed by the Swiss Code of Criminal Procedure. Turkey In Turkey, the legal provisions and laws that constitute the basis of the actions against the counterfeiting activities are as follows: 1. Criminal Proceedings: Decree-Law No. 556 Pertaining the Protection of the Trademarks: Article 61/A of the Decree- Law No. 556 regulates the trademark infringement crime which is the basis of the criminal proceedings; Turkish Criminal Code: The general provisions of the Turkish Criminal Code, which is applicable any kind of regulations containing criminal sanctions, regulates the acts of Participation, Assisting, Encouraging, Facilitating under general provisions and in this regard, it is commonly accepted that the general principles should also be applied to the criminal remedies in case of counterfeiting and piracy. Copyright Law No. 5846: Article 71 of the Law regulates the copyright infringement crime which is the basis of the criminal proceedings.the Law also has specific regulations as to the criminal sanctions to be applied against internet service and/or content providers in case of copyright infringement. Turkish Commercial Code: Article 64 of the Law provides the basis for the criminal responsibility in case of unfair competition. Although the acts of unfair competition are not usually considered as pure IPR infringement, where there is no registered IPR, this provision also enables the right holders to stop the infringing products. Currently there is no criminal regulation regarding industrial designs and patents and in cases the provisions for unfair competition are applicable. 2. Administrative (customs) proceedings: Ukraine Customs Law No.4458: Law is the basis of IPR protection before the Customs. The Law provides the following: IP owners are required to register the trademarks before the General Directorate of Customs; IP owners are required to commence substantive legal proceedings and obtain an interim injunction within three days (for perishable goods) or ten days (for durable goods) from Customs seizure of the goods; Customs Regulation: The implementing regulation of Law. Police act pursuant to the Criminal Code, the Law of Ukraine On militia (militia police in Ukraine) and the Criminal Procedure Code. Proceedings can be classified as criminal. Police act also pursuant to the Administrative Offence Code. Proceedings can be classified as administrative offence. 16

17 Prosecutor acts pursuant to the Criminal Code, the Law of Ukraine On prosecutor s office and the Criminal Procedure Code. Proceedings can be classified as criminal. State tax service acts pursuant to the Administrative Offence Code, the Law of Ukraine On State Tax Service of Ukraine. Proceedings can be classified as administrative offence. State inspectors on intellectual property act pursuant to the Administrative Offence Code, the Statute on Inspector on intellectual property of the State Service for Intellectual Property of Ukraine. Proceedings can be classified as administrative offence. Antimonopoly committee of Ukraine acts pursuant to the Law of Ukraine On protection from unfair competition, the Law of Ukraine On economic competition protection. Proceedings can be classified as civil. United Kingdom In the UK the relevant legal provisions include action by Trading Standards or the police under the following: 1. The Trade Marks Act 1994, Section 92, under which it is an offence to apply, on goods or their packaging, a sign which is identical to or likely to be mistaken for a registered trade mark; or to sell, offer for sale or hire or to distribute such goods; or to possess such goods for sale or serve any goods for sale, hire or distribution, which have not been authorised by the trade mark owner. 2. The Copyright, Designs and Patents Act 1988, Section 107, under which a person may face criminal sanctions if he deals (for example, by selling, importing or distributing) with an infringing copy of a copyright work which he knows or has reason to believe is an infringing copy. 3. The Consumer Protection Act 1987 and the the UK Consumer Protection from Unfair Trading Regulations 2008, which contain provisions to protect intellectual property rights. 4. Various provisions relating to health and safety in respect of counterfeit products under the Electrical Equipment (safety) Regulations 1994 and the Toy (Safety) Regulations 1995 and 2011 as well as EU Health & Safety legislation and general product safety regulations. (c) Is the filing of a complaint/prosecution/application by the right-holder necessary for each separate agency to take action against infringing goods, or may such an involvement by these bodies be initiated ex officio? Austria The police can act ex officio or on request by the public prosecutor. A private party cannot request the police to act. In accordance with the law, right holders must file a complaint to initiate criminal proceedings. However, the police may take immediate action if it is otherwise at risk of losing evidence. Generally speaking, it could help to have an application filed with customs because it may be expected that the police will consult with customs in the course of its action when the goods have a non-eu origin. 17

18 Belgium The police, customs and the economical control services have the competence to initiate ex officio action (for example raids or controls of suspect shops) against IPR infringements. Since the introduction of the Law of 15 may 2007 it is no longer necessary that the right-holder files a criminal complaint to allow these services to take action. Bulgaria No. All bodies are entitled to take actions ex officio. Filing a complaint with clear indications of the infringer, place of infringement, differences from the original products etc. might make the actions of the respective bodies more efficient. Cyprus No, a complaint/prosecution/application by the right holder is not necessary (the agencies may act ex officio), but certainly helps in initiating the procedure and in speeding things up. Czech Republic No, the filing of a complaint by the right-holder is not necessary for each case. In cases, where the right-holder has filed application for customs measures, the customs will commence the proceedings ex officio, but the case cannot be concluded with seizure and destruction without the right-owner s cooperation. Likewise, the Czech Trade Inspection also may proceed ex officio, but the case cannot be concluded with seizure and destruction without the right-owner s cooperation. Denmark 1. Police: The Police are authorized to act ex officio against suspected infringements of IP rights, as this constitutes criminal offence in Denmark. The main rule is, however, that the Police do not take such actions unless a complaint has been filed by the right holder. 2. Prosecutors: If the Police suspect an infringement or if the right holder is filing a complaint to the Police, the Police hand over the case to the IP prosecutors that will decide if an investigation shall be initiated. The investigation is directed by the prosecutor however carried out by a police officer. During the investigation, the IP prosecutors may take actions such as seizures, raids, arresting suspected infringers etc. ex officio. Estonia Both the Police and the Customs are authorised to act ex officio. Finland The right holder is required to file a request for criminal investigation in case of IPRrelated crimes for that the Police or the Customs might take actions based on the infringement. However, if there is a very important public interest related to the crime, 18

19 the Police and the Customs may act ex officio. In practice, the very important public interest exists rather seldom. France 1. Customs: they can act ex officio; 2. DGCCRF: they can act ex officio; 3. Police and Gendarmerie: they can act ex officio Germany Customs as well as the Police are authorized to act ex-officio. Greece 1. Customs Authorities may act ex officio (regardless of the filing of a watching intervention. However, once a seizure is accomplished, the filing of an intervention is then necessary). 2. Police may act ex officio when a raid is initiated based on other provisions of the penal law. However, the filing of a prosecution by the right holder is necessary in the case of a trademark infringement/counterfeit issue; 3. Municipal police act ex officio. Hungary Customs can act ex officio or upon an informal notice of the right-holder sent by e- mail or reported on telephone on customs' hotline. Ireland 1. Gardai: Whilst it is possible for criminal action to be taken by the Gardaí against infringing goods and those involved with them ex officio, in practice, due to budgetary constraints, it is usually necessary for a complaint to be made by a right holder before any action is taken. 2. Customs: Irish Customs, if they have sufficient grounds for suspecting that the goods infringe an intellectual property right, make use of their ex officio powers granted under Article 4 of the Regulation (EC) No 1383/2003. However, the vast majority of border measures are taken further to the filing of an application for action and right holders should not rely on the ex officio procedure to detect counterfeit goods and other goods infringing an intellectual property right and instead be vigilant and lodge applications for action in order to defend their intellectual property rights. Irish Customs have been much more willing to take action on the basis of a granted application than they have been in taking ex officio actions. Italy In relation to the custom procedure, the action starts with the filing of an application for recordal of trademarks at the custom authorities. In case this application is not filed, the custom authorities may nevertheless seize products, but will request the trademark owners to proceed with a late filing of the application. 19

20 In all other cases, the authorities act ex officio, but also upon a complaint, which shall be filed by the rights holder. Latvia All the official bodies can take their actions by their own initiative if they establish any possible infringement, but practically proceedings have been initiated and actions taken after complaint of the right-holder. Lithuania The filing of a complaint/prosecution/application is not necessary; all relevant bodies can initiate actions ex officio. Nevertheless, should the complaint be filed to the Police authorities, the Police would be obligated to start criminal investigation or would have to provide written notice with motives explaining the refusal to start the investigation. Luxembourg Although the police could act ex officio, they do in practice only act in case of a complaint of a right holder. Malta The Police require a criminal complaint by the right-holder, as injured party, in situations of alleged copyright violations. For trademark, design and patent violations the Police do not require a criminal complaint and may take action ex officio. Customs may take ex officio action under the Regulation and Chapter 414 though an application by a right-holder needs to be subsequently lodged within the time-frames of the law in order for Customs to keep hold onto the goods and for the right-holder to take further action such as filing civil proceedings in Court in order to obtain the destruction of the goods. Netherlands Filing a complaint is not necessary and the agencies will also act ex officio. Of course filing a complaint will tip the police and FIOD and will help in the process of getting a prosecution started. Right-holders will therefore in most cases file a criminal complaint after the police have seized counterfeit goods. Paraguay No, theoretically there is no need for the private affected party to file anything in a criminal scenario. In practice, however, it is essential to file and follow up the pertinent report before the IP Prosecution Unit. Poland It is sufficient if the right-holder files an application for prosecution to one of the agencies. 20

21 Portugal Industrial Property right infringements in Portugal are classified as semi-public crimes. In the definition according to general Penal law, semi-public crimes are those where the investigation and subsequent procedural steps are dependent upon the filing of a complaint. However, the crime of infringement of Industrial Property rights is subject to a special system, since although the initiation of proceedings against the infringer requires a complaint to be filed (hence the classification as a semi-public crime see 2d. below), these crimes can be investigated on the initiative of the authorities. In this regard, Article 342(1) of the Industrial Property Code states as follows: Prior to the beginning of the inquiry phase and notwithstanding [the need to file a complaint], the criminal police bodies shall carry out, in an ex officio capacity, inspection and preventive measures. Furthermore, Article 342(2) of the said Code specifies that Articles which display evidence of a crime provided under this Code, as well as the materials or instruments that were mainly used to commit the crime shall always be seized. In turn, Copyright infringements are classified as public crimes, whereby proceedings are initiated ex officio by the Public Prosecutor, without the need for the intervention of the injured party. Romania Measures may be initiated ex officio. One feature that may be specific to Romanian authorities is that the Customs Intervention Law 344/2005 allows verification of the infringement of intellectual property rights for all types of goods seized by the authorities e.g. when found during other controls for any type of fraud. Slovakia Authorities may take an action against infringing goods ex officio. Filing a law suit is not always necessary, but most IP cases are taken in civil proceedings. Slovenia 1. Police: Un-authorized use of a trademark for commercial activities constitutes a criminal offence, thus the Police is authorized to act ex officio. (Criminal Code, Art. 233 and 256; Police Act, Art. 9, Criminal Procedure Act, Art. 145). 2. Market Inspectorate: Ex officio involvement in cases of goods marketed under the signs (marks, trademarks) causing confusion on the origin of respective goods. (Competition Protection Act, Art. 13, 28 and 30). 3. Public Prosecution Service: A public prosecutor has to act ex officio where there is reason to suspect that a criminal act has been committed for which the offender is prosecuted ex officio, which includes un-authorized use of others IP rights for economic purposes (Criminal Procedure Act, Art.20). South Korea In cases of patent, design, and copyright infringement, the filing of a complaint by the right-holder is necessary for the police or the prosecutor to take action against infringing goods. However, in cases of trademark infringement, the police or the 21