Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (also known as "(IPR) Enforcement Directive" or "IPRED") is a

European Union directive A directive is a legal act of the European Union that requires member states to achieve particular goals without dictating how the member states achieve those goals. A directive's goals have to be made the goals of one or more new or changed n ...

in the field of

intellectual property Intellectual property (IP) is a category of property that includes intangible creations of the human intellect. There are many types of intellectual property, and some countries recognize more than others. The best-known types are patents, co ...

law, made under the

Single Market A single market, sometimes called common market or internal market, is a type of trade bloc in which most trade barriers have been removed (for goods) with some common policies on product regulation, and freedom of movement of the factors of pr ...

provisions of the

Treaty of Rome The Treaty of Rome, or EEC Treaty (officially the Treaty establishing the European Economic Community), brought about the creation of the European Economic Community (EEC), the best known of the European Communities (EC). The treaty was signe ...

. The directive covers civil remedies only—not criminal ones. Under Article 3(1), Member States can be censured in the

European Court of Justice The European Court of Justice (ECJ), officially the Court of Justice (), is the supreme court of the European Union in matters of European Union law. As a part of the Court of Justice of the European Union, it is tasked with interpreting ...

if their civil procedures on the infringement of intellectual property rights are "unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays". Otherwise the Directive harmonises the rules on

standing Standing, also referred to as orthostasis, is a position in which the body is held in an upright (orthostatic) position and supported only by the feet. Although seemingly static, the body rocks slightly back and forth from the ankle in the ...

evidence Evidence for a proposition is what supports the proposition. It is usually understood as an indication that the proposition is truth, true. The exact definition and role of evidence vary across different fields. In epistemology, evidence is what J ...

interlocutory Interlocutory is a legal term which can refer to an Court order, order, Sentence (law), sentence, decree, or Judgment (law), judgment, given in an intermediate stage between the commencement and conclusion of a cause of action, used to provide a ...

measures,

seizure A seizure is a sudden, brief disruption of brain activity caused by abnormal, excessive, or synchronous neuronal firing. Depending on the regions of the brain involved, seizures can lead to changes in movement, sensation, behavior, awareness, o ...

and

injunction An injunction is an equitable remedy in the form of a special court order compelling a party to do or refrain from doing certain acts. It was developed by the English courts of equity but its origins go back to Roman law and the equitable rem ...

damages At common law, damages are a remedy in the form of a monetary award to be paid to a claimant as compensation for loss or injury. To warrant the award, the claimant must show that a breach of duty has caused foreseeable loss. To be recognized at ...

and

costs Cost is the value of money that has been used up to produce something or deliver a service, and hence is not available for use anymore. In business, the cost may be one of acquisition, in which case the amount of money expended to acquire it is ...

and judicial publication.

Subject-matter and scope

The Directive requires all Member States to apply effective, dissuasive and proportionate remedies and penalties against those engaged in counterfeiting and piracy. Thus, the purpose of the instrument is to regulate enforcement of intellectual property rights, not the rights themselves. The Directive leaves unaffected the substantive provisions on intellectual property, international obligations of the Member States and national provisions relating to criminal procedure and criminal enforcement. The subject-matter of the Directive is defined in Article 1. It applies to enforcement of intellectual property rights which include industrial property rights. The scope of the Directive is defined in Article 2. It applies to all infringements of IP rights in Community and national law, without precluding more stringent protection that the Community or national law may otherwise grant. The general obligation in the Directive is to provide for remedies necessary to enforce intellectual property rights. These shall be "fair and equitable" and must not be "complicated or costly, or entail unreasonable time-limits or unwarranted delays". They must furthermore be effective, proportionate and dissuasive and must not act as barriers to trade. The persons who are entitled to apply for the remedies are primarily the holder of intellectual property right, but also any person authorised to use it, such as licencees and intellectual property rights.

Collective rights management Collective rights management is the licensing of copyright and related rights by organisations acting on behalf of rights owners. Collective management organisations (CMOs), sometimes also referred to as collecting societies, typically represen ...

and professional defence bodies may also have the right under certain circumstances.

Evidence

Section 2 of the Directive deals with the evidence. Article 6 gives the power to the interested party to apply for evidence regarding an infringement that lies in the hands of the other party to be presented. The only requirement is for that party to present "reasonably available evidence sufficient to support its claim" to courts. In case of an infringement on a commercial scale, Member States must also take steps to ensure that "banking, financial or commercial documents" of the opposing party are presented. In both cases confidential information shall be protected. Measures for preserving evidence are available even before the proceedings commence. Article 7 provides that such measures may be granted under the same conditions as under Article 6 and include provisional measures such as "the detailed description, with or without the taking of samples, or the physical seizure" not only of the infringing goods (such as

hard drive A hard disk drive (HDD), hard disk, hard drive, or fixed disk is an electro-mechanical data storage device that stores and retrieves digital data using magnetic storage with one or more rigid rapidly rotating hard disk drive platter, pla ...

s) but also materials used in the production and distribution (e.g., French ''

saisie-contrefaçon Under French law, the ''saisie-contrefaçon'' is a means of proof of the infringement and, more generally, any violation of an intellectual property right. This procedure permits the holder of the intellectual property right, upon receiving the a ...

'').Article 7.1 Such measures may be taken "without the other party having been heard, in particular where any delay is likely to cause irreparable harm to the rights holder or where there is a demonstrable risk of evidence being destroyed". These are

, '' ex parte'' and ''

in personam ''In personam'' is a Latin phrase meaning "against a particular person". In a lawsuit in which the case is against a specific individual, that person must be served with a summons and complaint (in England & Wales known as Particulars of Claim (CP ...

'' orders known in the English and Irish jurisdictions as Anton Piller orders and in France as "''saisie-contrefaçons''".

Provisional and precautionary measures

At the request of an applicant, the judicial authorities may issue an

to prevent an "imminent infringement" of intellectual property rights or to prevent a continuing infringement. In the latter case, the order may be followed with a recurring penalty payment or lodging of a guarantee intended to compensate the rights holder (paragraph a). An injunction can also be issued, under the same conditions, against an intermediary, but these are covered in Article 8(2) of the

Information Society Directive The Copyright and Information Society Directive 20012001/29 is a directive in European Union law that was enacted to implement the WIPO Copyright Treaty and to harmonise aspects of copyright law across Europe, such as copyright exceptions. ...

and are, in principle, subject to national law. Apart from the ordinary injunctions of the previous paragraph there also exist the so-called

Mareva injunction Asset freezing is a form of interim or interlocutory injunction which prevents a defendant to an action from dealing with or dissipating its assets so as to frustrate a potential judgment. It is widely recognised in other common law jurisdictio ...

s in Article 9(2). In common law, these are ''ex parte'' and ''in personam'' orders used to freeze assets (including bank accounts) to prevent abuses of process. They can be issued as worldwide injunctions, preventing worldwide dispersal. In that case, their effectiveness depends on their ''in personam'' character, as a party who is found to be guilty of disposing of assets will be held to be in contempt of court. Like Anton Piller orders, their use is confined mostly to the UK. Article 9(2) provides that, in the case of an infringement on a commercial scale, judicial authorities may order a precautionary seizure of "movable and

immovable property In English common law, real property, real estate, immovable property or, solely in the US and Canada, realty, refers to parcels of land and any associated structures which are the property of a person. For a structure (also called an impro ...

" which includes freezing the bank accounts and other assets. This may only be done if the applicant demonstrates that it is likely that recovery of damages will be endangered. Further to that, documents relating to banking and other financial transaction may be communicated.

Implementation

The provisions of the Directive were due to be implemented in all member states of the

European Union The European Union (EU) is a supranational union, supranational political union, political and economic union of Member state of the European Union, member states that are Geography of the European Union, located primarily in Europe. The u ...

by 29 April 2006. However, a number of states have not completed the necessary steps. The Directive has been implemented into United Kingdom law by the Intellectual Property (Enforcement, etc.) Regulations 2006. The Directive has been implemented into Dutch law, and came into force on 1 May 2007. It has been implemented in France on 27 June 2008. The Swedish parliament voted to implement the Directive on 26 February 2009, and it went into force on 1 April 2009.

Criticism

The Directive has been widely criticised for what opponents called a draconian approach similar to the United States'

Digital Millennium Copyright Act The Digital Millennium Copyright Act (DMCA) is a 1998 United States copyright law that implements two 1996 treaties of the World Intellectual Property Organization (WIPO). It criminalizes production and dissemination of technology, devices, or ...

(DMCA). In fact, the criticism was so strong—especially from the telecommunications industry and parts of computer industry—that the original draft was substantially modified. A number of problems still remain in the final document, according to the international civil liberties organisation IP Justice. * Cambridge University's Ross Anderson * ZDNet News * BBC Analysis * Indymedia on RFID tags

Examples of cases wherein the provisions of the Directive have been applied

In the 2007 ''Princo Corporation, Ltd v Koninklijke Philips Electronics'' case before the Court of Genoa, Italy, the Dutch company

Philips Koninklijke Philips N.V. (), simply branded Philips, is a Dutch multinational health technology company that was founded in Eindhoven in 1891. Since 1997, its world headquarters have been situated in Amsterdam, though the Benelux headquarter ...

, owner of patents on

CD-R CD-R (Compact disc-recordable) is a digital media, digital optical disc data storage device, storage format. A CD-R disc is a compact disc that can only be Write once read many, written once and read arbitrarily many times. CD-R discs (CD-Rs) ...

technology, requested and obtained an order of precautionary seizure over all Princo's movable and immovable property, including its bank accounts, with a view to ensuring the recovery of damages to be awarded at the end of the liability proceedings. A judgement in the case of '' Tommy Hilfiger Licensing LLC and others v Delta Center A. S.'' (2016) extends the European Court of Justice's decision in the ''L’Oréal v eBay'' 2011 case (relating to online marketplaces). The Tommy Hilfiger case held that under the third sentence of Article 11 of the Directive, operators of physical marketplaces, in this case

Prague Prague ( ; ) is the capital and List of cities and towns in the Czech Republic, largest city of the Czech Republic and the historical capital of Bohemia. Prague, located on the Vltava River, has a population of about 1.4 million, while its P ...

Market Halls, who sublet pitches to market-traders, may be forced to stop concluding contracts with market-traders selling counterfeit goods within their facilities, in order to prevent infringements of intellectual property rights by the market-traders.Palmer Biggs IP Solicitors
Tommy Hilfiger Licensing LLC & Others v Delta Center A.S. - Case C-494/15
judgment 8 July 2016, accessed 1 January 2022

References

External links

Summaries of EU legislation > Internal market > Businesses in the internal market > Intellectual property > Enforcement of intellectual property rights

Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights

Directive 2004/48/EC – national implementing measures

Adoption procedure of Directive 2004/48/EC

"Combating counterfeiting and piracy in the single market"

Green Paper In the United Kingdom, the Commonwealth countries, Hong Kong, the United States and the European Union, a green paper is a tentative government report and consultation document of policy proposals for debate and discussion. A green paper represen ...

of the

European Commission The European Commission (EC) is the primary Executive (government), executive arm of the European Union (EU). It operates as a cabinet government, with a number of European Commissioner, members of the Commission (directorial system, informall ...

, 15 October 1998
Report from the office of the European Parliament in the UK

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