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ACT No. 19111999 ColI. of July 29, 1999,
on measures concerning entry, export and re-export of goods infringing certain intellectual property rights, and amending some other acts
The Parliament has hereby passed the following Act ofthe Czech Republic:
PART ONE
MEASURES CONCERNING IMPORT, EXPORT AND RE-EXPORT OF GOODS INFRINGING CERTAIN INTELLECTUAL PROPERTY RIGHTS
Chapter I
SUBJECT MATTER OF THE ACT
Article 1 - (1)
- The present Act stipulates conditions under which a customs office takes measures if it harbours a justified suspicion that goods which are
- (a)
- proposed to be released for free circulation 1, or placed under the export procedure2, or with respect to which a re-export application has been filed3, or placed under any ofthe procedures involving suspensive arrangements4, or placed in a free customs zone or a free customs warehouse , 5
- (b)
- discovered in the course of customs supervision or a customs check in other cases
are counterfeit or pirated goods.
- (2)
- The present Act also authorises customs offices to order destruction or another method of depreciation of goods which have been declared counterfeit or pirated goods by a court, as well as to deal with offences and misdemeanours arising from violations of the present Act.
Article 2
For the purpose ofthe present Act, the term
(a) "counterfeit goods" shall denote
1 Articles 128 to 132 of Act No. 13/1993 ColI. (Customs Act), as amended by Act No. 11311997 ColI. 2 Articles 214 to 216 of Act No. 1311993 ColI. 3 Article 233 of Act No. 13/1993 ColI. 4 Article 133 of Act No. 1311993 ColI. 5 Articles 217 to 232 of Act No. 1311993 ColI.
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I. goods, including their packages, on which a marking which is either the same as, or confusingly similar to, a trademark registered for other goods is placed without the consent of the owner of the trademark or a generally known trademark, thus damaging rights of the trademark owner6, as well as all items and articles carrying the same or similar marking (marks, logos, labels, stickers, promotionalleafiets, instructions for use, warranty documents etc.), including cases when they have been presented to a customs office separately without the goods they belong to, or when a customs office has discovered them separately without the goods they belong to; - a package bearing the marking referred to in Subparagraph I above, including cases when it has been presented to, or discovered by, a customs office separately, i.e. without the goods it belongs to;
- a mould or die specifically designed or modified to produce counterfeit trademarks or goods bearing such a trademark, or its computer model;
- goods infringing upon rights of the owner or co-owner of a patent or a copyrighe,
- (b)
- "pirated goods" shall denote goods, including their packages, directly or indirectly manufactured without the consent of the owner or co-owner of a patent, the owner of a copyright certificate, copyright title or another right protected under the Copyright Act, or owner of a title attached to a registered industrial design or utility design, or without the consent of the person authorised to manufacture the goods in question, which are copies or include a copy provided that making of the copy constitutes an infringement of the above rights under a special act8, and also moulds or dies specifically designed or modified to produce pirated goods, if the use of such a mould or die is or could be detrimental to the owner's rights under a special legal standard.
- (c)
- "authorised person" shall denote the owner or co-owner of a patent, the owner of a copyright certificate, the owner of a trademark, the owner of a copyright title or another right protected under the Copyright Act, or the owner of a title attached to a registered industrial design or utility design, an authorised person's representative9 or another authorised person.
Article 3
The present Act shall not apply to goods which
(a) bear a trademark with the consent of its owner, are protected by a patent, a copyright or a right similar to copyright, or a right attached to a registered industrial design or utility design, are manufactured with the consent of the owner of such a right, but which are
6 Act No. 13711995 Coll. (Trademarks Act) 7 Act No. 527/1990 ColI., on inventions, industrial designs, and rationalisation proposals. 8 Act No. 35/1965 ColI., on literary, scientific, and art works (Copyright Act), as amended
by subsequent legislation. Act No. 527/1990 Coll., on inventions, industrial designs, and rationalisation proposals, as amended by Act No. 591/1991 Coll. Act No. 478/1995, on utility designs.
9 Act No. 35/1965 ColI. Act No. 237/1995 Coll., on collective management of copyrights and similar rights, and changing and amending some other legal acts.
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proposed for or placed under any of the procedures listed in Article 1, Paragraph (1), Subparagraph (a), or with respect to which a re-export application has been filed, or are placed in a free customs zone or a free customs warehouse without the consent of the owner of such a right, - (b)
- are manufactured or furnished with a trademark under terms and conditions different from those agreed upon with the owner of the right in question,
- (c)
- are not of a commercial nature, are imported by a traveller, and are relieved from import customs duties 10.
Chapter II
SUBMISSION OF AN APPLICATION REQUESTING A MEASURE TO BE TAKEN BY THE CUSTOMS OFFICE
Article 4
Submission of the Application
- (1)
- An authorised person may submit a written request asking the customs office in the jurisdictional territory of which the goods in any of the situations described in Article 1, Paragraph (1), Subparagraph (a) are found to take measures preventing his or her rights to be infringed.
- (2)
- The request shall be submitted to the customs directorate in the jurisdictional territory I I of which the applicant has his or her permanent residence or seat. If the authorised person submitting the request does not have his or her permanent residence or seat in the territory of the Czech Republic, the request may be submitted to any customs directorate.
- (3)
- The request shall contain the following particulars:
- (a)
- a detailed description of the goods in question, permitting the latter to be identified;
- (b)
- facts justifying the suspicion that the goods in question infringe upon the pertinent right(s);
- (c)
- the time for which the measure taken by the customs office (hereinafter "the measure") is to be implemented;
- (d)
- the identification of the customs office which is to take the measure.
- (
- 4) Attached to the request shall be a document proving that the applicant is an authorised person as defined in Article 2, Subparagraph (c). Such a document may be
d) a certificate of entry of the right or title in question into an appropriate register, which is issued, insofar as rights and titles registered in such a manner are concerned, by an authority defined by a special act12;
10 Articles 46 to 48 of Decree No. 13611998 ColI., on relief of goods from import customs duties.
I I Article 7, Paragraph 2, of Act No. 13/1993 ColI.
12 For example: Act No. 527/1990 ColI., on inventions, industrial designs, and rationalisation proposals, Act No. 478/1995, on utility designs, Act No. 13711995 ColI. (Trademarks Act).
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e) a document proving its holder to be the owner of an unregistered right or title to an industrial or utility design; f) a document entitling its holder to use the rights defined in Article 2, Subparagraphs (a) or (b);
g) a document entitling its holder to submit the request, or a document specified in Subparagraphs (a) or (b) above, if the request is submitted by an authorised person's representative or another authorised person; - (1)
- In addition to the information and documents referred to in Paragraphs (3) and (4) above, the authorised person shall provide to the customs directorate any additional available information needed to consider the request. The term "additional information" refers particularly to data on specific properties of the protected goods, documents showing the customs value or price of the goods, package documents, documents permitting to distinguish between counterfeit or pirated goods from the protected goods etc.
- (2)
- If the request concerns pirated goods, the authorised person shall provide, in addition to the particulars listed in Paragraph (3) above, the following information, if available:
- (f)
- the place where the goods are found, or their anticipated destination;
- (g)
- information identifYing the consignment or individual packages;
- (h)
- the estimated arrival/dispatch time ofthe goods;
- (i)
- the means used for transporting the goods; G) information about the importer, exporter, or holder ofthe goods.
- (1)
- The request shall be submitted in Czech. If the request is submitted in a foreign language, there shall be an authorised translation into Czech enclosed therewith. The same shall apply to the documents, information, and additional data mentioned in Paragraphs (4) to
(6) above.
Article 5 - (1)
- If the request meets the requirements laid down in Article 4 above, the customs directorate shall invite the authorised person to deposit, within 15 days of such an invitation, an adequate guarantee (hereinafter "the guarantee") as provided for in Article 6 below, and to settle a lump sum as stipulated in Article 7 below. If the customs directorate does not comply with the request it shall inform the applicant about the fact and the reasons thereof in writing.
- (2)
- Within 15 days of the conditions laid down in Paragraph (1) above having been met, the customs directorate shall instruct the customs office mentioned in the request to take the measure, including the time for which it is to be implemented; it shall also communicate these facts to the authorised person.
- (3)
- If the authorised person does not agree with the manner in which the request has been dealt with, he or she shall ask, within one month from the delivery of the negative notification or invitation provided for in Paragraph (1) above, the Ministry of Finance (hereinafter "the Ministry") to examine whether the procedure employed by the customs directorate was correct. The Ministry shall examine whether the procedure employed by the customs directorate was correct, and communicate its findings to the authorised person within one month from having been asked to do so.
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- The authorised person shall notify without delay the customs directorate that his or her right is no longer registered in the pertinent register or that it has expired because of another legal reason.
- (5)
- The submission of the request as provided for in Article 4 and the procedure outlined in Paragraphs (1) to (4) above shall not be governed by the Administrative Code13.
Article 6 Deposition of a Guarantee Providing for a Compensation of Costs and Potential Damages - (1)
- The guarantee providing for a compensation of costs and potential damages shall be used to ensure the payment of
- (a)
- damages caused to persons against whom the customs office has taken the measure in question, if the customs office has cancelled its ruling to withhold the goods for the reasons set forth in Article 13, Paragraph (1), or if it has later been proven that the withheld goods are neither counterfeit goods nor pirated goods,
- (b)
- the compensation of costs efficiently spent by the customs office in accordance with Article 7, Paragraph (1).
- (2)
- The amount of the anticipated damage according to Paragraph (1), Subparagraph a) above shall be set by the customs directorate on the basis of the customs value or price of the protected goods mentioned in the request submitted by the person according to the Paragraph (4), Subparagraph 5).
- (3)
- The deposition of the guarantee provided for in Paragraph (1) above may be accomplished by
- (a)
- a bank guarantee 14 ,
- (b)
- depositing a cash sum to the account of the customs directorate; the presentation of a cheque the payment of which is guaranteed by a bank shall be deemed equal to a deposit in cash.
Article 7 Compensation of Costs - (1)
- If a customs office adopts a measure in connection with the request, and subsequently cancels its ruling to withhold the goods for the reasons set forth in Article 13, Paragraph (1), or if it is later proven that the withheld goods are neither counterfeit goods nor pirated goods, the authorised person shall be obliged to compensate the costs eff.iciently and economically spent by the customs office as a result of the goods in question having been under customs supervision.
- (2)
- The adoption of a measure shall be subject to a payment of a lump sum. The lump sum is represented by reasonable average yearly costs incurred by the customs office as a result of adopting the measure. If the customs directorate, acting upon the request of the authorised
13 Act No. 7111967 ColI. (Administrative Code). 14 Articles 313 to 322 ofthe Business Code.
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person, extends the time for which the measure is to be implemented, the compensation of costs shall be increased to twice the lump sum for each subsequent year. The lump sum shall be stipulated in a decree issued by the Ministry. - (3)
- If it has been proven that the goods in question are counterfeit or pirated goods, the compensation of costs shall be paid by the importer (insofar imported goods are concerned), or by the exporter (where exported or re-exported goods are involved), or by the person at whom the goods in question have been found (in all other cases).
- (4)
- The amount of the compensation of costs shall be determined by the customs directorate. The compensation of costs shall be paid within thirty days from the day the customs directorate's decision is communicated to the payer.
Article 8
Compensation of Damages
(1) If a customs office adopts a measure in connection with the request, and subsequently cancels its ruling to withhold the goods for the reasons set forth in Article 13, Paragraph (1), or if it is later proven that the withheld goods are neither counterfeit goods nor pirated goods, the authorised person shall be obliged to compensate the damage inflicted as a result of the apprehension of the goods in question upon their owner, importer, exporter,
. .
consIgnee, or consIgnor.
(2) The damage compensation shall be governed mutatis mutandis by provisions of the Civil Codcl5.
CHAPTER III DISCOVERY OF COUNTERFEIT OR PIRATED GOODS IN THE COURSE OF CUSTOMS SUPERVISION OR A CUSTOMS CHECK IN OTHER CASES
Article 9
(1) If the customs office finds, - (a)
- when performing a customs check of goods transported across the state borderl6, or
- (b)
- when searching for goods removed from customs supervision 17, or
l8
- (c)
- when performing a customs checkof goods placed under any of the procedures involving suspensive arrangements, or
- (d)
- when performing a check of goods placed in a free customs zone or a free customs
h 19
ware ouse "