1. The Objective of the Directive
The Directive of the European Parliament and the Council of 29 April
2004 on the enforcement of intellectual property rights is the first act of the
Community regulating issues relating to measures and procedures for the
protection of intellectual property rights. The existing disparities between
the Member States' legal systems as regards the means of enforcing intellectual
property (IP) are indicated in the Directive's preamble. These disparities are
prejudicial to the proper functioning of the Internal Market and prevent an
equivalent level of IP rights protection from existing throughout the
Community. They also weaken the substantive law on IP and lead to fragmentation
of the Internal Market in this field.
The objective of the Directive is to approximate the legislative
systems to ensure a high, equivalent, and homogenous level of protection in the
internal market. It is worth mentioning that the Directive only imposes a
minimal level of legal protection. National law can therefore provide for a
higher level of protection in so far as the legal protection measures and
procedures applied are right and just.
2. The subject matter
The Directive covers all categories of IP rights (copyright and
related rights, industrial property rights), which fall under the Community
regulations. The Member States can, apart from the categories of rights
indicated, expand the implementation of the Directive's provisions to other
areas of legal protection, in particular to fight against unfair competition.
Some legal protection measures provided for in the Directive may only cover
acts carried out on a commercial scale, that is acts carried out for direct or
indirect economic or commercial advantage. The right of information on the
origin and distribution networks of goods or services that infringe IP rights
is an example of such a measure. It is possible for the Directive, however, to
provide for the right of information on acts that are not carried out on a
commercial scale.
3. Scope (of Application)
The Directive provides that a wide range of persons are entitled to
use the protective measures and procedures. Apart from IP rightholders
(owners), within that range are also licensees, collective IP rights-management
bodies and other entities that protect the collective and individual interests
of entitled persons. It should be noted that it is the Member States that
decide on the authorization and its scope as regards use of the measures and
procedures under national substantive law.
Presumption of authorship is an important legal instrument, which
should facilitate the use of the measures and procedures provided for in the
Directive. The Directive specifies that it is sufficient for the author's name
to appear on his/her work in the usual manner for the author of an artistic or
literary work, in the absence of proof to the contrary, to be regarded as the
creator of that work and, in consequence, to be entitled to institute
infringement proceedings. The same presumption applies (mutatis mutandis) to holders of related rights with
regard to their protected subject matter.
4.Measures and procedures of legal protection
4.1. Evidence and right of information
The directive's provisions on evidence and right of information
aim to reinforce the situation of an entitled person in the event of a lawsuit.
It is possible to apply these measures both before filing an IP rights
infringement suit and in the course of court proceedings.
Measures provided for in the Directive include an order to present
evidence that is under the control of the opposing party, as well as to
preserve evidence by taking samples or by physically seizing infringing goods
or materials and implements used in the creation or manufacture of the goods.
The right of information enables judicial authorities to order
information on the origin and distribution networks of the goods and services
that infringe IP rights to be provided by the infringer or any other person.
Any substantiation (making it probable) that the IP right has been infringed is
sufficient to enforce such measures.
4.2. Provisional and precautionary measures
Provisional and precautionary measures are issued by a judicial
body for the duration of the court proceedings. Three types of measures are
provided for in the Directive:
- an injunction intended to prevent any imminent infringement of
the IP right or the continuation of the infringements,
- the seizure or delivery up of the goods suspected of
infringing an IP right so as to prevent their entry into or movement within the
channels of commerce,
- safeguarding the claim by seizing the alleged infringer's
moveable and immoveable property in circumstances when, in the absence of a
safeguard, the recovery of damages would be endangered.
4.3. Corrective measures and injunctions
The corrective measures provided for in the Directive are designed
to cancel out the consequences of an infringement. The Directive defines three
obligatory measures: recall from the channels of commerce, definitive removal
from the channels of commerce, and destruction. Undoubtedly Member States can
also introduce measures other than these; in particular they can award the
goods to the injured person on account of the damages.
In the case of IP right infringement, judicial authorities can
issue an injunction to stop the infringement. Issuing such an injunction will
be justified in a situation when there is a real concern that the infringement
may recur.
4.4. Alternative measures
The Directive makes it possible to order pecuniary compensation as
an alternative to corrective measures and injunctions. An alternative measure
can only be applied in a situation where the infringer of an IP right has acted
without fault (unintentionally and without negligence) and the application of
corrective measures or injunctions would cause disproportionate harm to the
person subject to such measures.
4.5. Damages
The Directive's provisions on damages play a paramount role in the
application of IP rights. The Directive foresees two alternative ways of
setting damages. The first consists of setting damages on the basis of all
aspects, in particular the negative economic consequences, including lost
profits, which the injured party has suffered, and any unfair profits made by
the infringer, and non-economic factors, especially those connected with the
moral prejudice caused to the rightholder. The second consists in setting the
damages as a lump sum on the basis of such elements as the amount of royalties
or fees which would have been due had the infringer requested authorisation to
use the intellectual property right in question.
The liability for damages described above is based on the
principle of guilt. The Member States, however, may lay down that liability for
damages is independent of the infringer's fault. In this case, the relief from
any harm is possible either through the recovery of profits or through the
payment of damages.
4.6. Publication of judicial decisions
The Directive obliges the Member States to implement the provision
stating that a judicial body may order the dissemination of information
concerning its decision, including displaying the decision or publishing it in
full or in part. The Directive allows for optional publicity measures that are
appropriate for the particular circumstances, including prominent advertising.
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