Universal Postal Union response to the European Commission consultation on the enforcement of intellectual property rights

Transcription

1 UPU UNIVERSAL POSTAL UNION Ref: Universal Postal Union Weltpoststrasse BERNE 15 SWITZERLAND Universal Postal Union response to the European Commission consultation on the enforcement of intellectual property rights Introduction The Universal Postal Union (hereinafter "UPU") is responding to this consultation as an intergovernmental organization responsible for the postal sector and, in particular, as the "Guardian of the UPU Acts". The UPU member countries were consulted in order that the UPU's response might reflect their respective positions vis-à-vis this consultation. The aim of this UPU initiative is to ensure that due account is taken of the rights and obligations of UPU member countries, in accordance with the UPU Acts, and that the measures envisaged by the European Commission are compatible with the UPU Acts. / In 2010, the UPU provided the European Commission with its comments and position on the enforcement of intellectual property rights in response to the Commission's consultation concerning the review of EU legislation in that regard (attached). The UPU is a specialized agency of the United Nations comprising 191 member countries, including the European Union's member states. The Preamble to the UPU Constitution (fundamental UPU Act) stipulates that the mission of the UPU is to stimulate the lasting development of efficient and accessible universal postal services of quality in order to facilitate communication between the inhabitants of the world by guaranteeing the free circulation of postal items over a single postal territory composed of interconnected networks, encouraging the adoption of fair common standards and the use of technology, ensuring cooperation and interaction among stakeholders, promoting effective technical cooperation and ensuring the satisfaction of customers' changing needs. Article 1.2 of the UPU Constitution provides as follows: "2 The aim of the Union shall be to secure the organization and improvement of the postal services and to promote in this sphere the development of international collaboration." In accordance with article 2 of the Convention, UPU member countries officially designate one or more operators (hereinafter "designated operators") to operate postal services and to fulfil the obligations arising from the Acts of the Union on their territory. The Universal Postal Convention, which is supplemented by the Letter Post Regulations and the Parcel Post Regulations, is an international UPU treaty setting out the common rules applicable to the international postal service. These Acts are binding on all UPU member countries, which must ensure that their designated operators fulfil the obligations arising from the Convention and its Regulations. Union member countries must ensure that the decisions and rules established at the national and regional level, such as European directives, are in conformity with their international postal commitments.

2 2 Operational problems experienced by designated operators in relation to the application of directive 2004/48/EC on the enforcement of intellectual property rights The European Commission consultation, and in particular the related report, provides an evaluation of the implementation and impact of directive 2004/48/EC, which concerns the enforcement of intellectual property rights (hereinafter "the directive"). The UPU wishes to draw the Commission's attention to certain difficulties experienced by designated operators ("intermediaries" within the meaning of the directive) in implementing the directive. With regard to inbound mail traffic, certain designated operators pointed out that certain measures aimed at ensuring the enforcement of intellectual property rights, such as the seizure of items by customs authorities, were: creating additional work involving significant additional operational costs (temporary storage costs, additional administrative costs, disruption of operations, notification of the designated operator of origin and of the sender); and giving rise to disputes with the senders and addressees of these items, and even with the designated operator of origin, due to the often considerable time required by Customs to inspect items suspected of containing counterfeit or pirated articles. Competencies of designated operators and control of the distribution of goods infringing intellectual property rights The Commission's working document and report highlight the role to be played by intermediaries in controlling the distribution of goods that infringe intellectual property rights, and indicate that intermediaries have certain responsibilities (and obligations) and cannot rely on absolute immunity when intellectual property rights are infringed. Designated operators are aware that the postal network is used without their knowledge for the transport of fraudulent (counterfeit and pirated) goods. This type of use of the postal services is prohibited under the UPU Acts, which include counterfeit and pirated articles on the list of articles that it is prohibited to insert in postal items (article 15 of the Universal Postal Convention). It is incumbent upon designated operators to inform postal service users of these prohibitions, and upon users to comply with postal rules. Moreover, in accordance with UPU resolution C 37/2008, designated operators and customs authorities cooperate closely to identify postal items containing prohibited goods, and in particular goods infringing intellectual property rights. A memorandum of understanding in this regard has been signed between the World Customs Organization and the UPU, the aim of which is to foster and strengthen cooperation. This cooperation between designated operators and customs authorities should not, however, modify their respective competencies. Responsibilities should be allocated between the two parties in accordance with their respective responsibilities. In many UPU member countries, designated operators are bound by professional secrecy and are not authorized to open postal items or to inspect their content, a matter which falls solely within the remit of customs authorities. In accordance with the UPU Acts, the inspection of inbound goods sent by post does not fall within the competence of Posts, and is a matter outside the operational framework governing postal services and the obligations arising from the Acts delegated by member countries to their designated operators. Moreover, the detection of goods infringing intellectual property rights calls for highly specific skills. Customs authorities have such skills, whereas designated operators do not. Consequently, it would be contrary to the UPU Acts to hold designated operators liable for the content of postal items, particularly where the latter contain counterfeit or pirated goods. In accordance with article of the Convention, member countries and their designated operators shall not be liable in the case of items that fall within the prohibitions specified in article 15 of the Convention.

3 Distinction between online service providers and other intermediaries 3 The UPU feels that the directive should distinguish between online platforms (online service providers, e- shopping service providers) and other intermediaries. The services provided by online service providers are different to those provided by designated operators and other intermediaries, and have different implications in terms of the enforcement of intellectual property rights. Whereas designated operators and other intermediaries provide their users solely with a service for the physical transport of goods, e-shopping service providers also sell goods via their websites. They are aware of what goods are available for purchase via their websites. The possibilities of control associated with physical distribution channels are different from those associated with electronic distribution channels. Whereas designated operators with the obligation to provide the universal postal service throughout their country's territory have to contend with thousands of postal network access points, online service providers have only one channel to their servers. It is easier and less expensive to put into place technical measures to control the content of websites than it is to conduct a physical control of postal items. It is also easier and less expensive to take action against online platforms proposing illegal content. While illegal content can simply be removed and a website can be blocked or shut down in order to prevent the distribution of fraudulent content, the seizure of counterfeit goods entails storage and destruction procedures. The seizure of individual items containing counterfeit or pirated goods does not make an effective contribution to the effort to restrict the distribution of illegal goods (except where the items concerned are bulk items containing goods for commercial purposes). In the case of electronic distribution channels, the possibilities are vast. Whereas a postal item is transported from point A to point B, the content of an online platform is accessible to all. The following conclusion can be drawn: where fraudulent goods are involved, the transport phase is not the most effective stage of the logistics chain for combating infringements of intellectual property rights. Prior intervention by the competent authorities (production and putting on sale) has a far greater and more effective impact. Injunctions against intermediaries In the documents relating to the present consultation, the European Commission proposes that, in order to prevent the infringement of intellectual property rights, it should be made easier for the competent judicial authorities to issue injunctions against intermediaries whose services are used to infringe intellectual property rights. In particular, the European Commission raises the possibility of injunctions being issued without first ascertaining the intermediary's responsibility. This proposal underscores just how difficult it is to prove the responsibility of certain intermediaries. While action can clearly be taken much sooner if this question is not examined by judicial authorities, it does not resolve the matter. For designated operators, this raises an awkward question: who will bear the costs associated with the injunction? If the intermediary's responsibility has not first been ascertained, it should not bear the costs associated with this measure. Cost of corrective measures In its working document, the Commission addresses the conditions under which an intermediary should bear the cost of corrective measures (destruction and storage). This question is only relevant where the infringer cannot be identified, and it is with this meaning that the phrase "unless particular reasons are invoked for not doing so", contained in article 10.2 of the directive, should be interpreted.

4 4 In no case should these costs be automatically borne by the designated operator where the infringer cannot be identified. Berne, 30 March 2011

5 UPU UNIVERSAL POSTAL UNION Ref: Universal Postal Union Weltpoststrasse Berne 15 Switzerland Universal Postal Union response to European Commission consultation concerning the review of EU legislation on customs enforcement of intellectual property rights Introduction The Universal Postal Union (hereinafter "UPU") is responding to the present consultation as an intergovernmental organization responsible for the postal sector and, in particular, as the "Guardian of the UPU Acts". In accordance with article 112 of the General Regulations of the Universal Postal Union, the UPU is represented by the Director General of its International Bureau, Mr Edouard Dayan. The UPU aims to ensure observance of the rights and obligations of its member countries, in accordance with the UPU Acts, and the compatibility of the measure provided for therein. The UPU is a specialized agency of the United Nations comprising 191 member countries, including the European Union's member states. The Preamble to the UPU Constitution (fundamental UPU Act within the meaning of article 22 of the UPU Constitution) stipulates that the mission of the UPU is to stimulate the lasting development of efficient and accessible universal postal services of quality in order to facilitate communication between the inhabitants of the world by: guaranteeing the free circulation of postal items over a single postal territory composed of interconnected networks; encouraging the adoption of fair common standards and the use of technology; ensuring cooperation and interaction among stakeholders; promoting effective technical cooperation; and ensuring the satisfaction of customers' changing needs. Article 1 of the UPU Constitution provides as follows: "1 The countries adopting this Constitution shall comprise, under the title of the Universal Postal Union, a single postal territory for the reciprocal exchange of letter-post items. Freedom of transit shall be guaranteed throughout the entire territory of the Union. 2 The aim of the Union shall be to secure the organization and improvement of the postal services and to promote in this sphere the development of international collaboration." The single postal territory is defined in the UPU Constitution (article 1bis). The concept of the "single postal territory" is one of the founding principles of the UPU. Traditionally, it has covered three principles: i ii iii the uniform treatment of postal services through common regulation; non-discrimination in the handling of international mail; freedom of transit. This concept is reinforced by the universal service obligation, provided for in article 3 of the Universal Postal Convention, and by its relationship with the interconnection of postal networks provided for in the Preamble to the Constitution.

6 2 When article 1.1 of the UPU Constitution was adopted by the 1964 Vienna Congress, postal parcels were the subject of an Agreement (i.e. of an optional UPU treaty). They were incorporated into the basic services provided for in the Convention by the 1999 Beijing Congress. It is mandatory for all UPU member countries to provide the basic services. Consequently, the concept of the single postal territory covers the basic services provided for in the Universal Postal Convention (hereinafter "Convention"), which include the postal parcels service. The Convention is a UPU treaty. It is supplemented by the Letter Post Regulations and the Parcel Post Regulations. These Acts are binding on all UPU member countries. In accordance with article 8 of the UPU Constitution, member countries, or their designated operators if the legislation of those member countries so permits, may make Special Agreements concerning the international postal service, provided always that they do not introduce provisions less favourable to the public than those provided for by the Acts to which the member countries concerned are parties. In accordance with article 2 of the Convention, UPU member countries officially designate one or more operators (hereinafter "designated operators") to operate postal services and to fulfil the obligations arising from the Acts of the Union on their territory. The UPU Acts provide for international postal operations and not for customs formalities. The designated operators of the countries of origin and destination shall be authorized to submit items to customs control, according to the legislation of those countries (article 18.1 of the Convention). Items not fulfilling the conditions laid down in the Convention and the Regulations shall not be admitted (article 15 of the Convention). By virtue of article of the Convention, member countries and designated operators shall not be liable in the case of items that fall within the prohibitions specified in article 15 of the Convention. The postal sector lies at the heart of international exchanges: over five billion international postal items are processed by designated operators each year. As facilitators of international exchanges, designated operators are directly concerned by counterfeiting and piracy. Exchanges have become global and counterfeiting represents an international challenge that requires a global and coordinated response. Designated operators are aware of this phenomenon and are seeking to respond to it in the best possible way, within their jurisdiction and in collaboration with their national authorities, particularly in the customs field, while keeping customer satisfaction, service enhancement and quality of service as their main objectives. Many factors must be weighed up. An international response and an approach based on full cooperation between the various stakeholders, particularly in the customs field, is essential. For this reason, the UPU is fully involved in the discussions on counterfeiting. In order to secure close cooperation in the international postal sphere, the UPU collaborates with international organizations having related interests and activities (article 10 of the Constitution). The World Customs Organization (WCO), with which the UPU has traditionally maintained contact through the UPU WCO Contact Committee, is a case in point. The UPU signed a memorandum of understanding (MOU) with the WCO in 2007 with a view to strengthening cooperation between the two organizations. The MOU seeks to ensure a better understanding by postal administrations of customs authorities' tasks and problems and vice versa, thereby facilitating a productive exchange of information between the two parties with a view to encouraging the resolution of problems at national level. It has allowed a joint anti-counterfeiting strategy to be developed, and has facilitated exchanges of information between the two parties. The WCO Kyoto Convention (1974) on the simplification and harmonization of customs procedures lays down a specific customs procedure providing for rapid and efficient customs clearance of postal items (Annex J, Chapter 2). This simplified customs clearance is designed to meet the need to facilitate exchanges requiring cross-border movements of goods, in which the Posts are major players. In accordance with this procedure, the sender is the only party liable for the content of postal items. This procedure is in line with article of the Convention, which provides that member countries and designated operators shall not be

7 3 liable in the case of items that fall within the prohibitions specified in article 15 of the Convention. It should not, however, be confused with the liability of customs declarants (who are liable for the content of the items they clear) or with the clearance procedure that the latter must follow. The 2008 Universal Postal Congress modified article 15 of the Convention by including counterfeit and pirated articles in the list of articles that it is prohibited to insert in postal items. The 2008 Universal Postal Congress also adopted a resolution (C 37/2008) urging all UPU member countries to take all reasonable and practical measures to support Customs in their role in identifying counterfeit and pirated items in the postal network and to cooperate with the relevant national and international authorities to the maximum possible extent in awareness-raising initiatives aimed at preventing the illegal circulation of counterfeit goods, particularly through postal services. 1 Scope of the Regulation: situations in which customs authorities should be competent to take action Question Concerning the competence of customs authorities for IPR enforcement, what should be the situations of infringing goods in which customs authorities should take action? The UPU has no authority to determine the situations of infringing goods in which customs authorities should take action and is therefore only indirectly concerned by this matter (see article 18 of the Convention). In accordance with UPU resolution C 37/2008, designated operators and customs authorities cooperate closely to identify postal items containing prohibited goods, and in particular goods infringing IPRs. The MOU between the WCO and UPU is also aimed at fostering and strengthening this cooperation. To accomplish this task, the allocation of responsibilities between customs authorities and designated operators must be clearly defined and remain within the framework of their respective areas of competence. In many UPU member countries, designated operators are bound by professional secrecy and are not authorized to open postal items or to inspect their content, which falls solely within the remit of customs authorities. In accordance with the UPU Acts, the control of goods sent by post is not within the competence of Posts. Such control would go beyond the operational framework governing postal services and the obligations arising from the Acts delegated by member countries to their designated operators. The separation of postal and customs functions should also be reflected in the separation of costs. Postal tariffs do not cover the operational costs falling within the competence of customs authorities. Transferring customs functions to designated operators would exceed the scope of the UPU Acts and would modify the regime of liability governing designated operators within the framework of the international postal service (see article of the Convention), making intervention possible only on the basis of bilateral agreements between designated operators and national customs authorities. Transferring customs functions to designated operators would also have a significant impact in terms of the costs faced by designated operators, which would be in addition to the impact of the full liberalization of postal services within the European Union. The primary role of designated operators and of the UPU is to guarantee the right of peoples to communication and information, in accordance with the UPU Constitution.

8 4 2 Scope of the Regulation: range of IPRs the Regulation should cover and possible derogations Question What should be the range of IPRs covered by the Regulation? The terminology used in Council Regulation (EC) No. 1383/2003 ("counterfeit goods" and "pirated goods") is akin to that used in the list of prohibited goods contained in article 15 of the Universal Postal Convention ("counterfeit and pirated articles"). The third category of goods (article 4 (c) of the Regulation) is not specifically included in the list of goods prohibited from inclusion in postal items. It could, however, be covered by the category "other articles the importation or circulation of which is prohibited in the country of destination". Article 15 of the Universal Postal Convention also stipulates that member countries or their designated operators shall have the option of extending their prohibitions contained therein. Moreover, the customs declarations, which are established by the UPU (in conjunction with the WCO within the framework of the UPU WCO Contact Committee) and are contained in the UPU Acts, stipulate that items "may be opened officially" (by customs authorities) and that it is the sender's responsibility to inquire as to import and export regulations (prohibitions, etc.). In accordance with article of the Convention, member countries and their designated operators shall not be liable in the case of items that fall within the prohibitions specified in article 15 of the Convention. Member countries and designated operators shall accept no liability for customs declarations in whatever form these are made or for decisions taken by Customs on examination of items submitted to customs control. 3 Scope of the Regulation: possible derogations for which customs authorities will not be competent to take action in the light of the Regulation Questions Should the derogation concerning small quantities of goods of a non-commercial nature contained in travellers' personal luggage be kept or should it be withdrawn? Should the derogation concerning overruns be kept or should it be withdrawn? Should the derogation concerning parallel trade be kept or should it be withdrawn? The UPU Acts do not make this type of distinction. In accordance with the Universal Postal Convention, it is prohibited to insert counterfeit and pirated articles in any item, regardless of its category. These derogations give rise to a problem of compatibility with the UPU Acts. While UPU member countries may extend the list of prohibitions contained in the Universal Postal Convention, they may not derogate from it. They may, however, make reservations, which must be approved by a majority vote of the Universal Postal Congress. Regarding overruns, the UPU bases itself on the principle of the single postal territory and Annex J of the Kyoto Convention. The UPU would emphasize that any new European customs regulations should take account of the need not to hamper the smooth functioning of the international postal service, the quality of service of which must not be jeopardized.

9 5 4 Simplified procedure enabling customs authorities to have infringing goods abandoned for destruction under customs control, without there being any need to determine whether an intellectual property right has been infringed Questions Should the implementation of the simplified procedure as described in Article 11 of Council Regulation (EC) No. 1383/2003 be kept as optional for member states? Or should it be compulsory and directly applicable by all member states? Or should it be deleted? The UPU Acts do not provide for the detention or seizure of postal items suspected of infringing IPRs. They provide only that the postal operator of origin should be notified of the prohibition under which the item falls and the articles which gave rise to its seizure (article RL 145 of the Letter Post Regulations and RC 135 of the Parcel Post Regulations). In this context, it should be noted that, as postal operators benefit from simplified customs clearance under the Kyoto Convention (Annex J), they are not obliged to acquire the status of customs declarant, which would, moreover, impact negatively on their liability. The UPU also refers to the concept of the single postal territory. 5 Small consignments and Internet sales Questions Should a new procedure be envisaged to deal with small consignments? What should be the concept of small consignment? Article 15 of the UPU Convention does not differentiate in this regard. As indicated above, under article 15, it is prohibited to insert counterfeit and pirated objects in any items, regardless of their category. It is not within the competence of the UPU to give an opinion on the introduction of a specific procedure for "small consignments" as such a procedure would not fall under the responsibility of designated operators. For information, the concept of "small packet" is provided for in the UPU Acts, which stipulate that a small packet is a packet weighing less than two kilogrammes. Small packets are classified as "letter-post items", which does not impact on their customs treatment within the meaning of the UPU Acts. Were a specific procedure for "small consignments" to be introduced, as explained in response to question 6, their storage and/or destruction would not fall within the competence of designated operators. 6 Costs of storage and destruction Questions What should be the scope of the provisions regarding costs in the IPR customs enforcement regulation? Should it refer to any cost or should it be limited to the costs incurred by customs authorities, leaving other costs to be borne in accordance with the common provisions regarding civil or criminal IPR enforcement applicable in the territory of the member state where action has been taken? What should be the responsibility, regarding costs of storage and destruction, of each of the economic operators involved voluntarily or involuntarily in the international trade of IPR-infringing goods? In addition to the right holders and the holder of the goods, there are several intermediaries involved, such as shippers, carriers, consignors, customs declarants and holders of customs warehouses.

10 6 Should these provisions be set out without prejudice of the right of the person liable for costs to seek redress through the judicial system from any other party involved according to common provisions in force? In this context, it should be noted that, as postal operators benefit from simplified customs clearance in accordance with the Kyoto Convention (Annex J), they are not, in principle, customs declarants. The storage and/or destruction of IPR-infringing goods inserted in postal items does not fall within the competence of designated operators, but of customs authorities (it is part of the customs control procedure). When a postal item is held by Customs, the subsequent treatment of that item is not within the competence of the designated operator. Since designated operators are not authorized to perform the customs control of postal items (see introduction), they cannot be held liable for the consequences of such control. On the basis of the UPU Acts, designated operators should not contribute to the cost of storing and/or destroying IPR-infringing items. However, through their efforts to raise awareness among customers and to cooperate closely with Customs in identifying items containing prohibited goods, designated operators help to reduce the costs associated with the storage and destruction of such items. The possibility of any costs borne by designated operators being the subject of an attempt to seek redress through the judicial system should also be excluded. Such an option would not be economically viable for the majority of designated operators, many of which lack the resources required to advance the costs. Moreover, the outcome would depend on national legislation, so the right of redress could not be guaranteed. Such an option would also be cumbersome and expensive, as is the case with all legal proceedings, and the intermediaries concerned would be discouraged from seeking redress. Finally, such an option would have a negative impact on the international postal service, particularly in terms of costs and quality.