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May 03
IPRED Consultation—INTA comments

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In line with its mission to advance and support the creation and improvement of trademark protection laws, the International Trademark Association (INTA) has responded to the European Commission’s recent consultation on the evaluation and modernization of the Enforcement Directive. The Enforcement Directive of April 29, 2004, set the standard for the enforcement of intellectual property (IP) rights within the European Union (EU). The Directive contains provisions on all aspects of IP right enforcement, including the collection and preservation of evidence, a plaintiff’s right to information, the issuance of preliminary and precautionary measures, the execution of decisions, and the calculation of damages. After more than a decade of the Directive being in effect, the EU Commission requested comments on the functionality and effectiveness of the Directive and its implementation in the EU Member States, particularly regarding the enforcement of IP rights in the online environment. 

INTA’ s Enforcement Committee—in particular, the Judicial Administration and Trademark Litigation (JATL) Subcommittee under the lead of Paulo Monteverde of Baptista, Monteverde & Associados  in Portugal—gathered comments from several different groups—namely, the Anticounterfeiting, Legislation and Regulation, Copyright, and Designs Committees. 

Overall, practitioners and right holders seem to be pleased with the implementation of the Directive. One major complaint concerns the fact that the implementation of the Directive into national regulations differs significantly among Member States, which creates discrepancies in procedural rules and also in the outcome of proceedings depending on the jurisdiction. According to the survey, the implemented regulations differ in procedural requirements, timeliness, cost of court proceedings, and damage awards. Practitioners therefore call for better harmonization of the procedures in order to curb the phenomenon of “forum shopping” and to allow for more predictability of the outcome of enforcement actions in every Member State.  In addition, the fast development of new technologies and marketplaces was recognized as creating a challenge for legislation, especially in cases of cross-border online infringements. However, in summary, the provisions in the Directive seem to create the intended results and have improved brand owners’ options to enforce their rights against infringements. It remains to be seen which corrective measures, if any, the Commission will suggest to address the respondents’ concerns.

For more information, please contact Iris Gunther (External Relations Enforcement Advisor) at igunther@inta.org

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