Act on Measures against Violation of Intellectual Property Rights at Import, Export an Re-export of Goods

(Act No. 271/2001 Coll. On Measures against Violation of Intellectual Property Rights at Import, Export and Re-export of Goods)

This act (the ``Act'') introduces a regulation of protection of the internal market against forgeries and illegal imitations into the Slovak legal order and strengthens judicial protection of intellectual property rights. Up to now this area was regulated only partially in the Customs Act and the protection was guaranteed only to rights protected by the Copyright Act.

The Act regulates: (1) conditions of adopting measures in case of suspicion that a forgery or illegal imitation is proposed or released into the customs regime, (2) authorisation to order destruction or depreciation of goods which are forgeries or illegal imitations on a basis of a court decision, and (3) offences and administrative torts.

For the purposes of the Act several significant terms were defined: forgery, illegal imitation, authorised person, intellectual property right, holder of goods.

Under this Act, the ``forgery'' shall mean:

1. goods, including its packaging, on which an identical or interchangeable sign with the trademark registered in the Trademark Register for the identical or similar goods is placed without authorisation, or an unauthorised placement of the appellation of the product's origin registered in the Register,
2. sign produced without authorisation which is identical or interchangeable with the trademark registered in the Trademark Register for the identical or similar goods,
3. packaging, on which the sign under letter b) above is placed without authorisation,
4. form or die designated or adjusted for production of trademarks or goods on which the trademark is to be placed, as long as the use of this form or die infringes or could infringe intellectual property rights,
5. goods, by which the right of the owner of a patent, the owner of a copyright certificate, the owner of a topography or the owner of a reproduction certificate are violated.

The ``illegal imitation'' means goods, including its packaging, directly or indirectly produced without the consent of the owner of a patent, the owner of a copyright certificate, the owner of an industrial design, the owner of a utility model, the holder of copyright or a right related to copyright, or without the consent of the person authorised to produce such goods, which is a reproduction or a reproduction is included in such goods, if production of the reproduction infringes intellectual property rights; the illegal imitation includes also a form or die specially produced, designated or adjusted for production of the illegal imitation, if the use of this form or die infringes or can infringe the intellectual property rights.

The ``authorised person'' means the owner of a patent, the owner of a copyright certificate, the owner of an industrial design, the owner of a utility model, the holder of copyright or a right related to copyright, the owner of a trademark, the owner of a topography, the owner of a reproduction certificate or another person if it proves its authorisation to claim protection of rights according to the Act.

The authorised person can request the Customs Office to adopt measures, which shall prevent infringement of an intellectual property right, whereas the Act specifies prerequisites of such request and its annexes as well. The request shall be submitted in the Slovak language. The applicant is obliged to provide an adequate guarantee of payment of costs connected with the request upon the call of the Customs Headquarters.

Following the notification of the Customs Headquarters on a necessity to adopt a measure on the basis of the request of an authorised person, the relevant Customs Office issues a decision on seizure of goods if the goods corresponding to the description of a forgery or illegal imitation is found in its district.

The Customs Office is obliged to issue a decision on seizure of goods also in case that the authorised person has not submitted the request, but the Customs Office has a suspicion resulting from the customs inspection of transported goods that the goods is a forgery or imitation. In such case, the goods is seized for three working days and the authorised person, if it is known, is notified of possible infringement of its intellectual property rights. If the authorised person does not submit the request for adopting a measure, or the seizure is not required for further proceedings, or its forfeiture, confiscation or destruction cannot be realised in accordance with provisions of the Act, the Customs Office shall return the goods to the person, whom it was seized.

If a court issues an enforceable decision stating that the goods is a forgery or illegal imitation and if the Customs Office does not decide about its forfeiture or confiscation according to the Act, the goods shall be destroyed even without a proposal of the authorised person. If the holder of goods is known, he shall destroy the goods under a customs supervision himself, and if he is not known, the Customs Office shall procure its destruction. The Customs Office can adopt also a different measure than destruction of the goods, e.g. removal of trademarks from the goods.

The costs of the Customs Office connected with the enforcement of the Act shall be paid by the authorised person.

The Act also regulates offences and administrative torts in connection with infringement of intellectual property rights. It is possible to impose fines up to the amount of SKK 100,000 in case of individuals and up to the amount of SKK 4,000,000 in case of legal entities, as well as to decide on forfeiture of goods.

This act becomes into force on 1 August 2001.

---

Next: Act on Self-Government of Upper Regional Units
Up: July 2001
Previous: July 2001