Counterfeit and Pirated Goods 6 th April 2011

Relevant Acquis Icelandic Legislation International Conventions Customs Intervention Preconditions Time Limits Intervention (Ex Officio) Time Limits Court’s Decisions Scope of Prohibition Co-operation Investigation & Prosecution Gap Analysis Contents

Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights Commission Regulation (EC) No 1891/2004 of 21 October 2004 laying down provisions for the implementation of Council Regulation (EC) No 1383/2003. Relevant Acquis

Customs Act No 88/ Article 132 Act on Trademarks No 45/1997 Act on Copyright No 73/1972 Act on Protection of Design No 46/2001 Penal Code No 19/1940 Working Rules issued by the Directorate of Customs for the implementation of the above mentioned provisions in the Customs Legislation Icelandic Legislation

According to the EEA Agreement Iceland has undertaken to obtain adherence to the following multilateral conventions on industrial, intellectual and commercial property: Paris Convention for the Protection of Industrial Property (Stockholm Act, 1967) Bern Convention for the Protection of Literary and Artistic Works (Paris Act, 1971) International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (Rome, 1961) International Conventions

Protocol relating to the Madrid Agreement concerning the International Registration of Marks (Madrid 1989) Nice Agreement concerning the International Classification of Goods and Services for the purpose of the Registration of Marks (Geneva 1977, amended 1979) Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the purposes of Patent Procedure (1980) Patent Cooperation Treaty (1984) International Conventions cont.

Customs can intervene on the basis of : Information conveyed to Customs that certain shipments contain counterfeit or pirated goods or that certain importers are suspected to participate in such illegal activities In the line of duty (Ex officio) Customs Intervention

Rights holder is obliged to provide: Written request for suspension Adequate evidence that the intellectual right is protected Proof that he/she is the holder of this right and that the importation will cause infringement of his/her rights Sufficient description of the goods Security deposit sufficient to compensate the rights holder, owner or importer of the goods for any damage or costs Preconditions for Intervention on Request of the Rights Holder

If satisfactory evidence has been presented: 10 days suspension of customs clearance Rights holder and owner to be notified promptly of the Directorate’s decision Rights holder has not responded by initiating a procedure with the competent authorities to seek his right The time limit may be extended for ten weekdays when special circumstances apply Time Limits

Customs Intervention on its own initiative is possible if satisfactory evidence, or at least reasonable suspicion, has been produced Customs promptly dispatches a notification giving the rights holder a time limit of three working days to make a request for suspension If a right holder does not act within three working days, the goods may be cleared through customs Customs Intervention In the Line of Duty (Ex Officio)

Time Limits If the rights holder submits a written request for suspension, customs look into whether all requirements, stipulated in the Customs Act, have been met In case all requirements have been fulfilled customs clearance is suspended for a time limit of ten working days The time limit may be extended for ten working days when special circumstances apply The rights holder is obliged to inform Customs of further development, e.g. Prohibition Order Other possibility is that the rights holder and the importer agree to an out-of-court settlement

If provisional measures are refused, or a court has ruled that there has been no infringement of an intellectual property right, customs shall revoke the decision on suspension of customs clearance If a court rules that there is an infringement of intellectual property rights and the ruling does not stipulate the disposal of the goods, the goods may be destroyed or disposed of in another manner without harm to the rights holder Customs can require the rights holder to pay storage fees and costs incurred by the customs authorities Court’s Decisions

Regulation does not refer to: Goods of non-commercial nature which are brought in personal luggage of passengers and exempted from the payment of customs duty Goods which have been marketed in another country by the right holder or with his approval Goods that are in transit through the Icelandic customs territory Scope of Prohibition

Good cooperation exists between the Consumer Agency and Customs Customs and Police intelligence units and even Europol have exchanged information concerning IPR cases This co-operation of Police and Customs is underlined with provisions both in the Customs and the Police Act Cooperation with other Agencies 14

According to § 8 of the Icelandic Police Act No 90/1996, the main legal principle is that the Police investigates all major offences in consultation with the prosecuting authority Icelandic Customs has, nevertheless, a small Investigation and a Legal department that investigate minor customs offences such as smaller IPR infringements Investigation and Prosecution 15

Legislation in the area of protection of intellectual property rights is not fully in line with EU Acquis: Some fine-tuning of the legislation is necessary in particular with regard to non-applicability to exports, transit and other suspense procedures Changes have to be made in order to make it possible for importers to present a written request for suspension from the rights holder where adequate evidence is provided that the intellectual right is protected Gap Analysis

Thank you for your attention Merci de votre attention Vielen Dank für Ihre Aufmerksamkeit Grazie per la vostra attenzione Dziękuję za uwagę Takk fyrir athyglina 17