SONN Patentanwälte – IP Attorneys

Article 10 of the Enforcement Directive not fully implemented into Austrian Law

Article 10 of the Enforcement Directive (Directive 2004/48/EC) provides corrective measures to be taken with regard to goods that have been found to infringe an intellectual property right. Those measures shall include:
  • recall from the channels of commerce
  • definite removal from the channels of commerce, or
  • destruction.
Comparing the Austrian provisions with these corrective measures, Austrian IP Acts (the Patent Act, Trademark Act, Copyright Act, etc.) only provide for the destruction of the infringing goods and the implements used for manufacturing such infringing goods. When implementing the EU Enforcement Directive into national law, the Austrian legislator merely noted in its considerations that corrective measures as provided by Article 10 of the Directive already exist in the Austrian IP Acts. Thus, no need for action was considered in this regard. Accordingly, the Austrian legislator obviously interpreted the Directive as meaning that Article 10 offered the national legislator three options to choose from. As the Austrian IP Acts already provided for the destruction of infringing goods, an amendment with respect to corrective measures was not considered to be necessary. However, in view of para 24 of the considerations, and also in view of the wording of the Directive in other languages than German, it is clear that the Community legislator wanted the national legislators to provide all three alternatives in their national laws. Thus, it was not up to national legislators to choose one of the three alternatives, rather the IP right owner should have three alternatives to choose from. Accordingly, the Austrian legislator has clearly failed to fully implement Article 10 of the Enforcement Directive. Also the Draft of the German government for implementing the Enforcement Directive into German Law, highlights the failure of the Austrian legislator. Corresponding to Austria, the German IP Acts also provided for destruction as the only corrective measures. In order to comply with the Enforcement Directive, recall and removal measures are now introduced in the German IP Acts. As the due date for implementing the Enforcement Directive has already expired and the relevant provisions of the Directive committed the Austrian legislator to amend the national IP Acts, Austrian individuals may claim direct enforceability of these sufficiently defined and unconditional provisions of the EU Directive. However, it is not entirely clear to us what distinction the courts will make between the recall and the removal of the infringing goods from the channels of commerce. What remains, is the humble wish that the Community legislator will pay much more attention to the actual wording of any future Directive in order to increase legal certainty and to ensure that a similar misinterpretation does not happen again. Dr. Rainer Beetz, LL.M.