Civil litigationThe European Union Trade Mark
Infringement cases relating to EUTMs are dealt with by national courts of the Member States according to local rules of civil procedure. Article 123 of Regulation (EU) No. 2017/1001 provides that Member States shall designate in their territories as limited a number as possible of national courts and tribunals of first and second instance, which shall have competence to deal with infringements of EUTMs.Directive 2004/48/EC on enforcement of intellectual property rights
Directive 2004/48/EC establishes a legal regime that is favourable to trademark owners regarding the collection of evidence relevant to trademark infringement and remedies. In particular, trademark owners may request a court order enabling them to inspect third parties’ premises where infringing goods are likely to be found, or to make a list of allegedly infringing goods and obtain samples of these, or even provisionally arresting allegedly infringing goods, as well as any other measure that could make it possible to preserve evidence relating to trademark infringement. Such measures can be ordered by a national court under either ordinary or summary proceedings, and may be ordered by a national court without notifying the defendant in advance or hearing its arguments. Furthermore, the Directive provides practical criteria for the quantification of damages on the basis of (1) the amount of royalties that would have been due if the infringer had requested a licence; (2) loss of profits suffered by the trademark owner; or (3) the profits made by the infringer.
Other enforcement proceedings
The EU has developed a particularly efficient system to trace and seize counterfeit goods within customs authorities. The system functions at a European level. The system is established by Regulation (EU) No. 608/2013, and the following are its main characteristics:
- the system covers goods infringing any intellectual property right based on EU law, such as trademarks, patents, utility models, supplementary protection certificates, plant varieties, semi-conductor topographies, copyright and industrial designs, as well as protected geographical indications;
- there is an accelerated procedure to secure destruction of infringing goods without a court order; and
- there are provisions dealing with counterfeit products imported by post or courier in small consignments.
The Regulation has reduced administrative costs and has ensured that more substantial information is made available so that the customs authorities can be better prepared to take proper action.
Many complexities are raised by counterfeit goods in transit through the EU territory. Article 9.4 of Regulation (EU) No. 2017/1001, expressly provides that:
the proprietor of that EU trade mark shall also be entitled to prevent all third parties from bringing goods, in the course of trade, into the Union without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorisation a trade mark which is identical with the EU trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark.