The European Parliament (the "Parliament") voted on 25 February 2014 on the trade mark package. The trade mark package was first proposed by the European Commission on 27 March 2013 (See, VBB on Belgian Business Law, Volume 2013, No. 3, p. 12 and 13, available at www.vbb.com).
The text voted by the European Parliament contains a number of important changes to the text that was agreed on by the Committee on Legal Affairs of the European Parliament on 17 December 2013 (See, VBB on Belgian Business Law, Volume 2014, No. 1, p. 7 and 8, available at www.vbb.com). The changes relate, inter alia, to the situation of goods in transit. The new provisions adopted by the European Parliament depart from the current system where Customs may only stop counterfeiting goods transiting through the European Union ("EU") if there is a risk that these goods enter the European market.
The text adopted by the European Parliament will enable Customs to stop counterfeit goods even when destined for a third country outside the EU provided that it does not prejudice the freedom of transit guaranteed by the World Trade Organisation ("WTO"). Goods in transit will therefore be subject to the procedure foreseen in Regulation 608/2013 concerning customs enforcement of intellectual property rights (See, VBB on Belgian Business Law, Volume 2013, No. 6, p. 5, available at www.vbb.com). Article 1.1 (c) of Regulation 608/2013 authorises customs authorities to inspect shipments in "suspensive procedures or free zone or free warehouse". Accordingly, Customs can report such goods to the trade mark holder and the latter can stop the products if they infringe the trade marks. In order to determine whether the products infringe a trade mark, Regulation 608/2013 refers to applicable trade mark rules. The new wording of the trade mark package now clarifies that the trade mark may be infringed even if a third party brings goods into the customs territory without being released for free circulation.
The adoption of the new provisions brought much debate in the European Parliament as many feared that a stricter approach to counterfeit goods would be prejudicial to European ports and airports as well as to manufacturers of generic pharmaceuticals. In response to the latter concern, the new provisions ensure the transit of genuine generic medicines (meaning in compliance with the 'Declaration on the TRIPS agreement and public health' adopted by the Doha WTO Ministerial Conference on 14 November 2001). In particular, trade mark holders will not have the right to oppose the use of International Non-proprietary Names (INN) of medicines on the basis of trade marks.
No date has yet been set for a first reading before the Council. It is expected that no political agreement will be reached before the European elections in May 2014. As a result, the legislative process will continue in the next legislative term and may even be repeated in part.
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