S.I. No. 48/1996 - European Communities (Counterfeit and Pirated Goods) Regulations, 1996.

S.I. No. 48 of 1996.

EUROPEAN COMMUNITIES (COUNTERFEIT AND PIRATED GOODS) REGULATIONS, 1996.

I, RUAIRÍ QUINN, 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 purposes of giving effect to Council Regulation (EC) No. 3295/94 of 22 December 1994⁽¹⁾ and Commission Regulation (EC) No. 1367/95 of 16 June 1995⁽²⁾ hereby make the following Regulations:

⁽¹⁾O.J. No. L341, 30-12-94, p.8.

⁽²⁾O.J, No. L133, 17-6-95, p.2.

1. These Regulations may be cited as the European Communities (Counterfeit and Pirated Goods) Regulations, 1996.

2. (1) In these Regulations—

"Applicant" means a person who makes an application under Regulation 4:

"Application" means an application under Article 3.1 of the Council Regulation:

"the Council Regulation" means Council Regulation (EC) No. 3295/94 of 22 December 1994 laying down measures to prohibit the release for free circulation, export, re-export or entry for a suspensive procedure of counterfeit and pirated goods;

"the Commission Regulation" means Commission Regulation (EC) No. 1367/95 of 16 June, 1995 laying down provisions for the implementation of Council Regulation (EC) No. 3295/94 laying down measures to prohibit the release for free circulation, export, re-export or entry for a suspensive procedure of counterfeit and pirated goods.

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

(3) A reference to a section in these Regulations shall be construed as a reference to the section as amended or extended.

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

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

(2) On due application being made to the Revenue Commissioners in that behalf and on the making by them of a decision under Article 3.5 of the Council Regulation to grant the application and, upon payment of a fee of £400 to them, the Revenue Commissioners shall during a period of 3 months beginning on such date as they may determine, or during such further period as they may decide upon application by the holder of the right, suspend the release of any counterfeit or pirated goods or detain them.

(3) An application shall be made on a form corresponding to the form set out in the Schedule to these Regulations and shall be accompanied by a sufficiently detailed description of the goods to enable the Customs authorities to recognise them.

(4) Where the holder of the right applies on his own behalf he shall also submit:

( a ) In the case of a right, being a trade mark or design right, that is registered or for which an application has for the time being been lodged:

(i) the certificate of registration (or a copy thereof) issued by the Controller in respect of the right specified in the application and where appropriate, the certificate of renewal issued by the Controller for the time being in force, or a copy thereof; or

(ii) 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 right as may be specified by the Revenue Commissioners.

( b ) In the case of a design right that is unregistered, or for which an application has not for the time being been lodged, or a copyright, or a neighbouring right any proof of authorship or of his status as holder.

(5) Where the application is made by a person, not being the holder of the right, who is authorised to use one of the rights referred to in Article 1 (2) (a) and Article 1 (2) (b) of the Council Regulation, he shall provide, in addition to the material specified in Regulation 4 (4), the document by virtue of which he is authorised to use the right in question.

(6) Where the application is made by a representative of the holder of the right, or of any other person authorised to use one of the rights referred to in Article 1 (2) (a) and Article 1 (2) (b) of the Council Regulation, he shall provide, in addition to the material specified in Regulations 4 (4) and 4 (5), proof of authorisation to act.

(7) Where the Revenue Commissioners make a decision on an application they shall forthwith notify the applicant in writing of that decision.

(8) Where the Revenue Commissioners refuse to grant an application, they shall give the reasons for refusal.

(9) 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.

5. The Revenue Commissioners may supply the applicant with, or request the applicant to examine, a sample of goods taken from a consignment entered for free circulation, export, re-export or for a suspensive procedure which appears to them to correspond to the description of goods contained in an application granted under Article 3.5 of the Council Regulation and which, in the case of counterfeit goods, appears 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 or pirated, giving his reasons, by reference to characteristics of the sample or its packaging or otherwise.

6. (1) Counterfeit or pirated goods which correspond to the description of goods contained in an application granted by the Revenue Commissioners under Article 3.5 of the Council Regulation and which in the case of counterfeit goods bear a trade mark identical to or substantially indistinguishable from the registered trade mark mentioned in that application shall not be released for free circulation, export, re-export or placing under a suspensive procedure during the period specified by the Revenue Commissioners.

(2) Counterfeit or pirated goods prohibited from being released for free circulation, exported, re-exported or entered for a suspensive procedure under paragraph (1) of this Regulation shall be deemed to be so prohibited for the purposes of sections 42, 178, 202, 207 and 208 of the Customs Consolidation Act, 1876 (1876, c.36), sections 3 and 5 of the Customs Act, 1956 (No. 7 of 1956) 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 said paragraph.

8. An application shall have no effect, or where a decision to grant an application under Article 3.5 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—

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

( b ) any change, following the making of the application, which takes place in the ownership or authorised use or in the registration of the right 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 and any Regulations made thereunder shall not apply to goods entered for free circulation, export, re-export or for a suspensive procedure in respect of which a decision to grant an application has been made by the Revenue Commissioners under Article 3.5 of the Council Regulation.

10. (1) Any person who makes a declaration for the release for free circulation, for export or for re-export or for placing under a suspensive procedure, in respect of goods found to be counterfeit or pirated shall, without prejudice to any other penalty to which he may be liable, be guilty of an offence and shall be liable on summary conviction thereof to a fine not exceeding £1,000.

(2) Any person who aids or abets the commission of an offence contrary to paragraph (1) of this Regulation shall, without prejudice to any other penalty to which he may be liable, be guilty of an offence and shall be liable on summary conviction thereof to a fine not exceeding £1,000.

(3) In any prosecution for a breach of this Regulation it shall be presumed, until the contrary is shown, that any document purporting to be a declaration is in fact a declaration and that any signature thereon is the signature of the person who purports to sign same.

11. Any person who makes a false declaration for the purpose of Article 6 of the Council Regulation shall, without prejudice to any other penalty to which he may be liable, be guilty of an offence and shall be liable on summary conviction thereof to a fine not exceeding £1,000.

12. The provisions of the Probation of Offenders Act, 1907 shall not apply to an offence under these Regulations.

13. Where an offence under these Regulations is committed by a body corporate and is proved to have been so committed with the consent or approval of or to have been facilitated by any connivance on the part of any person who, when the offence was committed, was a Director, Member of the Committee of Management or other controlling authority thereof, or Manager, Secretary or other Officer thereof, that person or persons shall also be guilty of the offence and shall be liable to be proceeded against and punished accordingly.

14. These Regulations shall be construed together with the Customs Acts.

15. An offence under these Regulations may be prosecuted by the Director of Public Prosecutions.

16. The European Communities (Counterfeit Goods) Regulations 1990 ( S.I. No. 118 of 1990 ), are hereby revoked.

C.& E. No. 1054A

SCHEDULE

Application to suspend the release of, or detain counterfeit and pirated goods entered for free circulation, export, re-export or for a suspensive procedure.

____________________________

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

(Full name in block letters)

is the holder of the right (registration number ...................................) shown below which registration is valid until ................................................., 19.............. and I request the Revenue Commissioners to suspend release of, or detain the goods shown hereunder if entered for free circulation, export, re-export or for a suspensive procedure during the period from ........ day of .............................. 19 ........... to ................ day of ............................................................ ......., 19.....................................

TRADE MARK/DESIGN RIGHT

A representation of the registered trade mark should be given in an Appendix to this application. Details of a Design Right may also be given in an Appendix.

GOODS

DETAILS OF IMPORT/EXPORT

As many details as possible of importation/exportation should be given. If necessary attach extra sheet.

*Delete as necessary

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

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 and Pirated Goods) Regulations, 1996.

Dated this ............................................ day of .................................................... , 19.................................

Signed ............................................................ ............................................................ ..................................

______________________________________________________________________________________________

NOTES

1. Applications may be lodged only by the holder or authorised user of a right or by an authorised representative of the holder or authorised user.

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

3. Each application must be accompanied by the following:

( a ) In the case of applications made by the holder of the right:

— for Trademark and Design rights — proof of registration, or of lodging of application with relevant office:

— for copyright or neighbouring rights and unregistered design rights — any proof of authorship or of his status as original holder:

( b ) In the case of applications made by persons authorised to use the right — as in (a) and in addition the title by virtue of which the use of the right is authorised;

( c ) In the case of a representative of (a) or (b) above — as in (a) or (b) and in addition, proof of authorisation to act for the holder of the right.

4. In addition, each certificate of registration must be accompanied by a representation of either the trade mark or the design.

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

6. Completed application forms should be forwarded to Customs Procedures A Branch. Office of the Revenue Commissioners, Castle House, Dublin 2.

GIVEN under my Official Seal, this 15th day of February, 1996.

RUAÍRÍ QUINN, T.D.,

Minister for Finance.

EXPLANATORY NOTE.

The purpose of these Regulations are to implement Council Regulation No. 3295/94 on measures to prohibit the release for free circulation, export, re-export or entry for a suspensive procedure of counterfeit and pirated goods.

They prescribe the form of application to be used, and the fee to be paid, by holders of a right seeking the interception and detention of counterfeit and pirated 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 and pirated goods shall be treated as prohibited goods under the Customs Act and introduce fines to apply in the event of infringements.