Select Committee on European Communities Report


65.  PROPOSED DIRECTIVE ON THE LEGAL PROTECTION OF DESIGNS (12813/97)

Letter from Lord Tordoff, Chairman of the Committee, to Ian McCartney MP, Minister of State, Department of Trade and Industry

  At its meeting on 4 February Sub-Committee E considered the Opinion of the Commission on the European Parliament's amendments to the Council's Common Position regarding the proposed Directive on the legal protection of designs.

  The Sub-Committee noted the Government's concern (identified in paragraphs 15 and 24 of the Department's Explanatory Memorandum) about the implications of the Parliament's Amendment No 12 (requiring a national court to be able to demand information on the source and distribution chain of allegedly infringing goods). The Sub-Committee also noted that the Commission has not accepted this amendment.

  In its Supplementary Explanatory Memorandum of 22 May 1996 the previous Government appeared satisfied that such a provision (then Article 16a) could be included in a directive made under Article 100A and did not raise any policy objections to it. The Sub-Committee would find it helpful if you could provide a more detailed explanation of the present Government's position on Amendment 12, identifying the legal problems and giving the Government's view as to whether or not Article 100A provides a sufficient legal base were Amendment 12 or a similar provision to be included in the Directive.

  This letter clears the document from scrutiny. I would, however, be grateful if you would supply a note on Amendment 12 at your earliest convenience.

5 February 1998

Letter from Ian McCartney MP, Minister of State, Department of Trade and Industry, to Lord Tordoff, Chairman of the Committee

  Thank you for your letter of 5 February clearing from scrutiny the Opinion of the Commission on the European Parliament's amendments to the Council's Common Position regarding the proposed Directive on the legal protection of designs. I apologise for the slight delay in providing the further information you requested on the European Parliament's Amendment No 12.

  The proposed Directive will harmonise certain substantive provisions in the laws of Member States on the protection of industrial designs. Amendment No 12 would require Member States to introduce a provision which would allow the holder of a protected design to ask a court to order a person to supply information about the origin and commercial distribution route of goods alleged to infringe the protected design if that person has been found in possession, for commercial purposes, of such goods or if he has been identified as the source or a link in the distribution of the goods. As you mention in your letter, an identical provision appeared as Article 16a in the amended proposal (5505/96) for the Directive presented by the Commission in March 1996 and was itself the subject of a Supplementary Explanatory Memorandum of 22 May 1996.

  Despite the fact that this provision was in the Commission's amended proposal, the Commission has decided that it cannot accept its reintroduction in the form of Amendment No 12. This is because such a provision is out of place in a Directive which is aimed at harmonising the law for protecting designs by registration. The Commission's view is that it is better to deal with the issues of counterfeiting and piracy which are addressed in part by Amendment No 12, comprehensively and horizontally, that is by providing a full set of enforcement measures applicable to a wide range of intellectual property rights, not just protected designs. The Commission have therefore promised to publish a Green Paper addressing this matter, possibly during our current Presidency. We would support the broader approach, as now proposed by the Commission, and await the publication of the Green Paper with interest.

  It remains arguable whether Amendment No 12 can be treated as an element in the harmonisation of designs protection law, so allowing it to be regarded as falling within the scope of Article 100a (EEC) which concerns the approximation of provisions whose objective is the establishment and functioning of the internal market. However, as noted in the Supplementary Explanatory Memorandum mentioned above, in its Opinion 1/94 the European Court of Justice held that the Community was competent to harmonise Member States' laws on enforcement if such harmonisation was necessary for the establishment of the internal market. On that basis legal opinion presently tends to regard the provision of Amendment No 12 as one which may be made under Article 100a.

  As indicated in your letter, paragraph 24 of my Department's Explanatory Memorandum of 12 January 1998 also expressed concern that the possibility of a court being able to demand information on the source and distribution chain of allegedly infringing goods might raise legal questions about self-incrimination. The Commission asserted in relation to the same provision in its amended proposal that the purpose of the "without prejudice" paragraph (3) was to ensure that the provision was without prejudice to existing measures protecting the rights of the persons faced with a court order to disclose information.

  I hope that this is helpful.

3 February 1998


 
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