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Legislation and practice

 

EU legislation

EU Regulation 2424/2015 - pdf of the European Parliament and of the Council of 16 December 2015 - in force since 23 March 2016 - published in the Official Journal of the EU L341/21 dated 24.12.2015, modifies the Community trade mark, which will henceforth be referred to as the “European Union trade mark". The Regulation is aimed at strengthening the protection of trademarks and fighting more effectively against counterfeiting and "... preventing the entry of infringing goods and their placement in all customs situations, including transit, transhipment, warehousing, free zones, temporary storage, inward processing or temporary admission, also when such goods are not intended to be placed on the market of the Union...”

European Commission guidelines - pdf. Commission notice on the customs enforcement of Intellectual Property Rights concerning goods brought into the customs territory of the Union without being released for free circulation, including goods in transit.

The Commission notice, published on the EU OJ C244/4 of 5.7.2016, clarifies at art. 2.1 that “… goods from third countries in transit through the EU may be classified as goods suspected of infringing an intellectual property right where there is evidence that they are intended to be put on sale in the European Union…”

EU Regulation 608/2013 - pdf of the European Parliament and of the Council of 12 June 2013: in force since 1st January 2014 – regulates the protection of intellectual property rights and the customs action against goods suspected of counterfeiting.

EU Commission Implementing Regulation 1352/2013 - pdf: establishes the two new forms provided for in Regulation (EU) No 608/2013 to be used to submit an application for domestic or EU action and for the extension request to Customs authorities.

Manual for the completion of applications for action - pdf and extension requests to be used by right-holders and Annexes (EU website)

(EEC) Council Regulation 2658/87 of 23 July 1987, on the tariff and statistical nomenclature and on the Common Customs Tariff.

 

Domestic legislation

The criminal code is the legal basis governing the fight against counterfeiting: Articles 473, 474, 517 ter and quater - pdf defines different kinds of crimes concerning industrial products with national or foreign trademarks or other distinctive features, counterfeited or altered, patents and food and agricultural products.

Letter n° 23166 of 3 March 2015 - pdf - Extension requests for action by the customs authorities in respect of goods suspected of infringing intellectual property rights pursuant to (EU) Reg 608/2013 and the EU Implementing Regulation 1352/2013 - pdf.

Legislative Decree n. 131 of 13 August 2010 - pdf – “Amendments to Legislative Decree n. 30 of 10 February 2005, establishing the Industrial Property Code, pursuant to Article 19 of Law no. 99 of 23 July 2009”

Law no. 99 of 23 July 2009 - pdf: strengthens the enforcement powers against counterfeiting, increases the level of sanctions and also makes some amendments to the criminal code, providing the Police Forces and the Customs Agency with better investigative tools.

Legislative Decree n. 30 of 10 February 2005 – pdf: it is the Industrial Property Code.

2004 Finance Act - pdf: introduces some rules that strengthen the customs action against counterfeiting.

 

Practice

PDF Letter no. 99713/RU of 5 September 2017 - Regulation (EU) 608/2013, art 24 – Early release of goods. Criminal Code, art 517 ter - Introduction into the territory of the State of goods produced by usurping industrial property rights

PDF Letter no. 116727 of 18 October 2016 - Action by the customs authority against goods suspected of infringing intellectual property rights. Regulation (EU) no. 608/2013. Implementing Regulation (EU) No. 1335/2013. Operational instructions for handling Applications For Action – AFA.

PDF Letter no. 58694 of 16/06/2015 - Operational instructions – Request of extension of the period during which the customs authorities are to take action against goods suspected of infringing intellectual property rights under Regulation (EU) no. 608/2013 and Implementing Regulation (EU) n.1352/2013

PDF Letter no. 23166 of 3 March 2015 - Request of extension of the period during which the customs authorities are to take action against goods suspected of infringing intellectual property rights under Regulation (EU) no. 608/2013 and Implementing Regulation (EU) no.1352/2013 - pdf

PDF Letter no. 22965 of 28 February 2014 - Regulation (EU) No. 608/2013 of the European Parliament and of the Council of 12 June 2013 and related Commission Implementing Regulation (EU) No. 1352/2013 of 4 December 2013. Circular letter 24/D of 30 December 2013. FALSTAFF Project - On-line transmission of applications for action.

PDF Circular letter 24/D of 30 December 2013 - Action by the customs authority against goods suspected of infringing intellectual property rights. Regulation (EU) no. 608/2013 repealing Regulation 1383/2003. Implementing Regulation (EU) No. 1335/2013 repealing Regulation 1891/2004.