S.I. No. 118/1990 - European Communities (Counterfeit Goods) Regulations, 1990.

S.I. No. 118 of 1990.

EUROPEAN COMMUNITIES (COUNTERFEIT GOODS) REGULATIONS, 1990.

I, ALBERT REYNOLDS, Minister for Finance, in exercise of the powers conferred on me by section 3 of the European Communities Act, 1972 (No. 27 of 1972), and for the purpose of giving effect to Council Regulation (EEC) No. 3842/86 of 1 December 1986¹, hereby make the following Regulations:

¹O.J. No. L 357, 18.12.86, p.1.

1. These Regulations may be cited as the European Communities (Counterfeit Goods) Regulations, 1990.

2. (1) In these Regulations—

"the Council Regulation" means Council Regulation (EEC) No. 3842/86 of 1 December, 1986¹ laying down measures to prohibit the release for free circulation of counterfeit goods;

¹O.J. No. L 357, 18.12.86, p.1.

"application" means an application under Article 3.1 of the Council Regulation and cognate words shall be construed accordingly.

(2) A word or expression that is used in these Regulations and is also used in the Council Regulation shall, unless the context otherwise requires, have the meaning in these Regulations that it has in the Council Regulation.

3. For the purposes of these Regulations and the Council Regulation the competent authority in the State shall be the Revenue Commissioners.

4. (1) On due application being made to the Revenue Commissioners in that behalf and on the making of a decision by them under Article 3.3 of the Council Regulation to grant the application and upon payment of a fee of £400 to them, they shall suspend the release of any counterfeit goods concerned during a period of 3 months beginning on such date as they may determine, being a period during which the trade mark specified in the application is registered.

(2) An application shall be in the form set out in the Schedule to these Regulations and shall be accompanied by—

( a ) the certificate of registration (or a copy thereof) issued by the Controller in respect of the trade mark specified in the application and where the trade mark concerned has been registered for a period of more that 7 years, the certificate of renewal issued by the Controller for the time being in force (or a copy thereof), or

( b ) a statement in writing signed by the Controller or an officer duly authorised by him in that behalf giving such information in relation to the said trade mark as may be specified by the Revenue Commissioners.

(3) Fees under these Regulations shall be paid into or disposed of for the benefit of the Exchequer in accordance with the directions of the Minister for Finance.

(4) In this Regulation "the Controller" means the Controller of Patents, Designs and Trade Marks.

5. The Revenue Commissioners may supply the applicant with, or request the applicant to examine, a sample of imported goods entered for free circulation which appears to them both to correspond to the description of goods contained in an application granted under Article 3.3 of the Council Regulation and to bear a trade mark identical to or substantially indistinguishable from the registered trade mark mentioned in that application and the applicant shall, within 24 hours of being requested by the Revenue Commissioners (or within such further time as they may allow), confirm to them in writing whether or not in his opinion the sample is counterfeit, giving his reasons, by reference to characteristics of the sample or its packaging or otherwise.

6. (1) Counterfeit goods which both correspond to the description of goods contained in an application granted by the Revenue Commissioners under Article 3.3 of the Council Regulation and bear a trade mark identical to or substantially indistinguishable from the registered trade mark mentioned in that application shall not, if entered for free circulation during the period specified by the Revenue Commissioners, be imported into the State.

(2) Counterfeit goods prohibited from being imported under paragraph (1) of this Regulation shall be deemed to be prohibited from being imported for the purposes of sections 42, 178, 202, 207 and 208 of the Customs Consolidation Act, 1876, as amended, and sections 6 , 7 and 9 of the Customs and Excise (Miscellaneous Provisions) Act, 1988 (No. 10 of 1988).

7. (1) An applicant shall give to the Revenue Commissioners such security within such time and in such manner as they may require against all actions, proceedings, claims and demands whatsoever which may be taken or made against, or costs and expenses which may be incurred by them in consequence of the detention of, or anything done in relation to, any goods to which the application relates.

(2) An applicant shall, whether or not any security as provided for in paragraph (1) of this Regulation is given, keep the Revenue Commissioners indemnified against all such liability and expense as is mentioned in the said paragraph.

8. An application shall have no effect or where a decision to grant an application under Article 3.3 of the Council Regulation has been made by the Revenue Commissioners that decision shall cease to have any further effect, without prejudice to the validity of anything already done thereunder where—

(i) the applicant has failed to comply with any of the requirements of these Regulations, or

(ii) any change, following the making of the application, which takes place in the ownership or authorised use or in the registration of the trade mark specified in the application, is not communicated in writing to the Revenue Commissioners.

9. The provisions of section 16 of the Merchandise Marks Act, 1887, as amended, and any Regulations made thereunder shall not apply to imported goods entered for free circulation in respect of which a decision to grant an application has been made by the Revenue Commissioners under Article 3.3 of the Council Regulation.

SCHEDULE

C. & E. 1054

APPLICATION TO SUSPEND RELEASE OF COUNTERFEIT GOODS ENTERED FOR FREE CIRCULATION

I ............................................................ ............................................................ ..............................................declare that

   (Full name in block letters)

Name and address of Company etc.

is the proprietor/registered user* of the trade mark (registration number ........................... ) shown below which registration is valid until.............................., 19.......... and I request the Revenue Commissioners to suspend release of the goods shown hereunder if entered for free circulation during the period from .................. day of ....................................., 19....... to ............ day of ......., 19 .........

*Delete as necessary.

TRADE MARK

GOODS

A detailed description of each item below should be attached to this application

DETAILS OF IMPORTATION

As many details as possible of importation should be given.

If necessary attach extra sheet.

*Delete as necessary.

I hereby indemnify the Revenue Commissioners against all actions, proceedings, claims and demands whatsoever which may be taken or made against them, or costs and expenses which they may incur in consequence of the detention of, or anything done in relation to, any goods to which this application relates.

I hereby undertake to comply with the provisions of the European Communities (Counterfeit Goods) Regulations, 1990.

Signed

(*State whether Sole Proprietor, Partner, Director, Company Secretary, Duly Authorised Person)

Notes:

1. Applications may be lodged only by the proprietor or registered user of the trade mark or a person acting on their behalf.

2. A fee of £400 is payable upon the grant of an application.

3. Each application must be accompanied by the certificate of registration of the trade mark (or a copy thereof), and, where appropriate, by the latest renewal certificate (or a copy thereof) or a certificate from the Controller of Patents, Designs and Trade Marks giving details of the registered trade mark.

4. Each application is valid for a maximum period of 3 months.

5. Completed application forms should be forwarded to Division 1, Office of the Revenue Commissioners, Stamping Building, Dublin Castle, Dublin 2.

C.& E. No. 1054.

GIVEN under my Official Seal, this 10th day of May, 1990.

ALBERT REYNOLDS,

Minister for Finance.

EXPLANATORY NOTE.

These Regulations give full effect to Council Regulation (EEC) No. 3842/86 of 1st December, 1986 on measures to prohibit the release for free circulation of counterfeit goods.

They prescribe the form of application to be used, and the fee to be paid, by trade mark owners and registered users seeking the interception and seizure of counterfeit goods. They set out the requirements as to the furnishing of security to, and indemnifying of, the Revenue Commissioners against liability or expense arising out of such detention. They provide that counterfeit goods shall be treated as prohibited goods under the Customs Acts.