ON COUNTERFEITING AND BORDER MEASURES WCO- IPR WORKSHOP ON COUNTERFEITING AND BORDER MEASURES Rome, 19÷20 October 2004 A practical training seminar for Customs officers enforcing Intellectual Property Rights Fight Against Counterfeiting - legislation: new national and community measures opeational instructions - results Good morning Ladies and Gentleman, This presentation is structured for showing the current italian legislation national law and the new Regulation adopted from the Council of the European Union, for protecting the intellectual property rights and original goods. D.ssa Cinzia Bricca – Head of the Central Anti Fraud Service

Entered into force on July 1st, 2004 Regulation (EC)1383/2003 Entered into force on July 1st, 2004 Broadens the scope of the legislation (art.2) in order to protect also the rights related to: plant variety protected designation of origin, and geographical indication geographical designations The Council of the European Union adopted on 22 July 2003 the Regulation (EC) No.1383/2003 – published on the Official Journal of the European Communities, L, No 196/7 of 2 August 2003 – providing for new regulating measures aimed at prohibiting the introduction, release for free circulation, export, re-export, introduction into a free zone or free warehouse, as well as the entry for a suspensive procedure of “counterfeit and pirated goods”. This regulation is applicable as of 1st July 2004. The regulation, replaces the Council Regulation (EC) No 3295/94 of 22 December 1994, and contains as the previous regulation, the basic Community regulation aimed at reinforcing the international fight against illegal trade, of counterfeit goods and/or pirated goods. The regulation establishing the measures to be taken at the external borders of the European Union under the agreements protecting the intellectual property rights and original goods. The European Commission, in compliance with the provisions of the new “basic regulation” has adopted in place of the Commission Regulation (EC) No 1367/95 of 16 June 1995, a special regulation which is being published in the Official Journal of the European Communities, hereinafter referred to also as the “implementing regulation”. With this regulation the Commission, in addition to define the subjective reference framework for implementing the provisions of the “basic regulation”, establishes the procedures to be followed for requesting customs action and identifies the means of proof certifying the entitlement to the right which is asked to be protected. Besides, it identifies the procedures for the information exchange between the Member States and the Commission, allowing the monitoring of the phenomena of fraud as well as the adoption of an adequate risk analysis to target controls. The system laid down in the new regulation for taking action fulfils the need for a wider protection of the trademark holders and the intellectual property rights. Hereinafter follow the procedures to be complied with by both the intellectual property right holder or by anyone who is authorized to use the same right and their representatives, as identified in Article 1 of the “implementing regulation” – when lodging an application for customs action, as well as all the fulfilments to be made by the offices for a correct application of the provisions and an efficient pursuit of the objectives. It is important to stress that the rights referred to in points a. b. c. were not covered by the rules previously in force.

The new legislative measures aim at preventing introduction, release for free circulation, export, re-export, entry into a free zone or in a free warehouse as well as for a suspensive procedure, of “counterfeit or pirated goods” The new legislative measures aim at preventing introduction, release for free circulation, export, re-export, entry into a free zone or in a free warehouse as well as for a suspensive procedure, of “counterfeit or pirated goods”

Defines the conditions of the intervention of customs authorities that may suspend the release of the goods or detain them for the period necessary to ascertain that goods are counterfeit or pirated The customs authorities exercise their power of intervention when goods suspected of infringing an intellectual property right are declared for the release for free circulation, exportation or re-exportation or have been discovered at the time of a control carried out on goods entering or exiting the Community customs territory. The suspension of the release of goods or their detainment may last, pursuant to Article 13 of the “Basic Regulation”, ten working days from the date of receipt of the notification of suspension of release by the holder of the right to the customs office. In the case of perishable goods, the period above referred to, shall be three working days. The customs office may, at the explicit request by the party, take samples from the goods which are suspected of infringing an intellectual property right, to be analysed, sending them to the right-holder that shall afterwards return them to the same office.

Financial Law 350/2003 (art. 4 commi 54 e 55) To strengthen the fight against counterfeiting, the national legislation (financial law for year 2004), provides for the establishment of a multi-media databank for collection of characteristic data idoneous for identification of goods to be protected An administrative decision dated February 28th, 2004, establishes that the multi-media databank is placed at the Customs Agency and is feeded with data contained in the protection requests already submitted by the holders of the intellectual property rights. art.4 comma 54. Per potenziare la lotta alla contraffazione e per tutelare la specificità dei prodotti, l’Agenzia delle dogane può sottoscrivere con gli operatori, su loro richiesta, convenzioni per la raccolta in una banca dati multimediale dei dati caratteristici idonei a contraddistinguere i prodotti da tutelare, senza oneri aggiuntivi a carico dello Stato. La raccolta dei dati di cui al presente comma ed il relativo trattamento è attività di rilevante interesse pubblico ai sensi della normativa sulla protezione dei dati personali, essendo diretta all’applicazione delle disposizioni la cui esecuzione è affidata alle dogane 55. Con determinazione dirigenziale, adottata entro sessanta giorni dalla data di entrata in vigore della presente legge, sono stabilite le modalità tecniche di attuazione delle disposizioni di cui al comma 54. In order to strengthen the tools for the fight against counterfeiting, also the national legislator, with the Financial Law No. 350 of 23 December 2003, provided for in Article 4, paragraph 54, the implementation of a multimedia databank containing all the specific data allowing the distinction of the products to be protected. According to the provisions of the Administrative decision of 28 february 2004 this databank is established within the premises of the Customs Agency and is supplied by data contained in the applications for protection submitted by the intellectual property right-holders. The application for action by the customs authorities is possibly aimed at protecting national or Community property. In both cases, the application made by using the form provided for in Article 3 of the “implementing regulation” and in accordance with the provisions set forth therein shall contain: • an accurate and detailed technical description of the goods; • any specific information the right-holder may have concerning the type or pattern of fraud, if known by the right’s holder; • the name and address of the contact person appointed by the right-holder;

Financial Law 350/2003 (art. 4 comma 55) ….Once fully running, the databank will be feeded with the protection requests submitted electronically through the customs system E.D.I. (Electronic Data Interchange). In order to make possible the protection of the goods, the right holders shall at least provide their detailed technical description and the name and address of a contact person. EDI Once this tool being established, the applications in question shall be normally electronically submitted in accordance with the provisions governing the conditions and technical procedures for the presentation of the customs documents by means of EDI (Electronic Data Interchange).

Financial Law 350/2003 (art. 4 comma 55) Art. 4 comma 80. L’autorità amministrativa, quando accerta, sia all’atto dell’importazione o esportazione che della commercializzazione o distribuzione, la violazione di un diritto di proprietà intellettuale o industriale, può disporre anche d’ufficio, previo assenso dell’autorità giudiziaria e facendone rapporto alla stessa, il sequestro della merce contraffatta, e, decorsi tre mesi, la distruzione, a spese, ove possibile, del contravventore; è fatta salva la conservazione di campioni da utilizzare a fini giudiziari. Minimum data required may be integrated with data on: a) The production and movement of goods, more specifically: name of the importer, exporter, holder of the goods; place of manufacturing; itinerary followed packaging and transport modalities arrival and departure dates The value of the goods The type of fraud, more specifically: comparison of technical specifications of genuine and suspected goods countries of manufacturing and itineraries followed by suspected goods Furthermore, by way of indication and where known, right-holders should also forward any other information they may have, such as: • the pre-tax value of the original goods on the legitimate market in the country in which the application for action is lodged; • the location of the goods or their intended destination; • particulars identifying the consignment or packages; • the scheduled arrival or departure date of the goods; • the means of transport used; • the identity of the importer, exporter or holder of the goods; • the country or countries of production and the routes used by traffickers; • the technical differences, if known, between the authentic and suspect goods. Details may also be required which are specific to the type of intellectual property right referred to in the application for action. The Financial Law for year 2004, allows, subject to prior authorisation of the judicial authority, the destruction of goods seized by the customs for violation of an intellectual property right, after three months from the seizure, provided that samples of the goods are collected for judicial purpose. Art. 4, comma 80, of the Financial Law for year 2004, allows, subject to prior authorisation of the judicial authority, the destruction of goods seized by the customs for violation of an intellectual property right, after three months from the seizure, provided that samples of the goods are collected for judicial purpose.

UE seizures and items 1999÷2003 These fastest slide data are related to the number of seizures and the number of articles seized in EU.

Italian seizures/items 1999÷2003 And these are related to the number of seizures and the number of items seized in Italy in same period. These results, based upon risk analisys, represent a signitive contribute to fight against counterfeiting goods in the Euopean Union.

International cooperation: OMD/INTERPOL/WIPO/COMPANIES ASSOCIATION JOINT INIZIATIVE IN THE FIGHT AGAINST COUNTERFEITING DYNAMIC PARTNERSHIP BETWEEN PUBLIC AND PRIVATE SECTORS PLANNING OF PARTICIPATIONS IN ORDER TO SUPPORT THE FIGHT TO THE COUNTERFEITING The World Customs Organization in partnership with Interpol and the World Intellectual Property Organization, hosted the First Global Congress on counterfeiting in Brussels in May of this year. The Congress was held in cooperation with the Global Business Leaders Alliance Against Counterfeiting (GBLAAC) and the International Security Management Association (ISMA) and other key private sector organizations. One outcome from the May Congress was the formation of a Steering Committee consisting of the above mentioned organizations. The Steering Committee was given a mandate to pursue the recommendations and ideas emanating from the Congress, develop priorities and implement remedial actions and plan the Second Global Congress scheduled for the fall of 2005. The First Global Congress on Combating Counterfeiting identified an urgent need to deal more effectively with the counterfeit trade at the international, regional and national levels. The Congress concluded that the worldwide trade in counterfeit products was growing dramatically in size and scope, and was increasingly controlled by organized criminal networks. Counterfeiting now represents real threats to global security, consumer health and safety, economic development and good governance. Next International Conference in Italy is the first opportunity for the leaders of three international agencies, WCO Interpol WIPO, to get together since the May Congress, be briefed on progress made and receive a comprehensive overview of the problems counterfeiting poses for one country and how that country is reacting domestically and internationally

Thanks for your attention …. More infos: http://www.agenziadogane.gov.it/italiano/falstaff/index.htm AGENZIA DELLE DOGANE UFFICIO ANTIFRODE CENTRALE 00143 ROMA, Via Mario Carucci,71 – Telefono +39 (0)6.5024.6135 – Fax +39 (0)6.5095.7300 e-mail: dogane.antifrode@agenziadogane.it made by Nicola Antonio Laurelli nicolaantonio.laurelli@agenziadogane.it 10/2004