Intellectual Property

The purpose of this decision, which replaces existing Regulation No. 3295/94 of 22 December 1994, is to clarify the instances when customs authorities may intervene where they suspect goods infringe intellectual property rights, in circumstances where such goods are released for free circulation, export, re-export or where such goods are discovered during an inspection upon import or export to the EU. The new Regulation is intended to strengthen the means available in the fight against counterfeit and pirated goods, clarify existing law, extend the scope of current provisions to include certain other intellectual property and promote simpler application of the provisions by intellectual property holders.

The wording of the Regulation was adopted following consultation with affected intellectual property right holders and professional associations. The new provisions introduce several significant changes and now apply to geographic indications, designations of origin and plant variety rights. All those entitled to apply to the customs authorities seeking appropriate action (including patent, trade mark, copyright, design and other intellectual property right holders) may now do so free of charge on a standard request form.

This regulation comes into effect on 1 July 2004.

Judgement of the European Court of Justice in Budějovický Budvar (C-216/01) of 18 November 2003

In 1976 the former Czechoslovakia and Austria entered into a bilateral convention to protect indications of origin relating to regional food products in the two neighbouring countries, whereunder Austria undertook to protect inter alia the “Bud” mark. In 1999 Budějovický Budvar commenced proceedings at the Handelsgerich Vien (Commercial Court in Vienna) to prevent Rudolph Ammersin, an Austrian importer of “American Bud” produced by Anheuser-Busch Inc., (an American company), from launching the American beer on the Austrian market, arguing that the “Bud” mark was protected under the bilateral convention. The Viennese court asked the ECJ for a preliminary ruling on the question of whether the bilateral convention was compatible with Regulation No. 2081/92 on the protection of geographical indications and designations of origin relating to agricultural and food products and with the EC Treaty.

ECJ held that in principle, the Regulation did not preclude the application of a bilateral agreement between Austria (a Member State) and the Czech Republic (a non-Member State), whereunder Austria would protect a simple and indirect indication of geographical origin from the Czech Republic in Austria, whether or not there would be a risk of consumers being misled, even if such protection could prevent the import of a product lawfully marketed in another Member State.

If, however, as a result, such a course of action prevented goods from being marketed in a non-Member State (USA), but which are lawfully marketed in another EU Member State (e. g. Germany), this would constitute a restriction on the free movement of goods within the EU and it would be necessary to verify that the restriction is justifiable under EU law.

On the basis of its earlier decisions, the ECJ confirmed that the purpose of the bilateral convention was consumer protection. This is a purpose falling within protection of intellectual property, provided that the protected designation has not become generic in its country of origin (Czech Republic) since the convention came into force.

Ultimately, the question of whether this restriction of the free movement of goods is compatible with EU law is a matter for the national court (here, the Commercial Court in Vienna). If the court holds that, taking into account the facts as well as general opinion in the Czech Republic, the “Bud” name designates a region or location in the Czech Republic requiring intellectual property protection, then it would not be contrary to EU law were such protection extended to include the territory of Austria.