1 July 2005 marked exactly one year since Council Regulation nº 1383/2003, came into force to replace Regulation (EC) nº 3295/94, concerning customs actions against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights.

One of the main new features which this Regulation incorporated and which was very important on a practical basis, consisted of the possibility of Member States providing Customs and rights holders with a more flexible procedure for the destruction of those goods suspected of infringing an intellectual property right, without having to initiate other proceedings such as judicial ones, to determine if the rights have been infringed.

This procedure consists of reaching an agreement with the importer, once the goods have been found to be infringing intellectual property rights, so that they agree to them being abandoned for destruction.

One year on it can be said that this new feature has been efficient, although there is still a long way to go.

The experience over this first year has shown that there have been many importers of goods infringing intellectual property rights who, in order to avoid judicial actions (generally criminal) being brought against them, have forfeited their goods and allowed them to be given up for destruction. In this way, the rights holders have not had to initiate legal procedures which are often long and costly.

Many importers of infringing goods have given up their goods for destruction so as to avoid lengthy and costly legal procedures

However, as the procedure set out in article 11 has not yet been regulated in Spain, through the corresponding Regulation of application, although it has not prevented its practice, it has certainly made it difficult. Until this procedure becomes properly regulated, the Customs authorities are forced to apply the customs regulation which regulates goods abandoned at customs, by establishing long waiting periods, considerably delaying the effective destruction of the goods which have been detected and retained.

Another issue which was not clear when this Regulation came into force was exactly how the Customs authorities would deal with parallel imports given that although the Regulation expressly considers them outside its scope of application, since October 2004 parallel imports from outside the EC will be considered a criminal offence, in accordance with the Penal Code as set out in Organic Law 15/2003, of 25 November.

This first year has shown that given the express exclusion in the Regulation, the general criteria followed by the Customs authorities is that of (i) not facilitating the rights holder with information on the parallel importer (ii) not retaining goods simply because the rights holder has provided accreditation of the start of the judicial action for importing goods from outside the EC without being authorised.

Following this criteria, in practice, for the Customs authorities to keep the parallel products under preliminary retention, preventing them from entering the Spanish market, it is necessary to obtain a judicial resolution which expressly agrees to this and in addition, the corresponding Customs must be duly notified of this within ten days (extendible for 10 more days) as set out in the Regulation for the examination of the goods.

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