Will Proposed Directive on Criminal Measures Aimed at Ensuring the Enforcement of IPR also Cover National Law?
In Document 11856/06 from the Presidency of the Council of the European Union to the Article 36 Committee concerning the Amended proposal for a Directive on criminal measures aimed at ensuring the enforcement of intellectual property rights some insights are provided:
"[...] The Commission has justified its proposal on the basis of research which shows that there are considerable differences regarding criminal penalties in the legislation of the Member States. In the view of the Commission, such disparities between the national systems of penalties hamper effective action against counterfeiting and piracy.
However, some delegations have raised concerns with respect to the need for further criminal measures against the violation of intellectual property rights. While acknowledging the phenomenon of cross-border and organised counterfeiting and piracy, many delegations have expressed doubts as to whether or not the harmonisation of criminal sanctions at the European level would be effective in eradicating such crime. In consequence, there have been doubts whether there is need for criminal measures taken by the Community and whether such measures would be in accordance with the principle of subsidiarity as set out in Article 5 TEC.
It has also been pointed out that the time-limit for bringing into force the laws, regulations and administrative provisions necessary to comply with the Directive 2004/48/EC has expired only recently, on 29 April 2006. Consequently, from this point of view it has been considered premature to enter into discussions about future criminal measures before the effectiveness of the civil law and administrative measures at the Community level has been assessed.
The Presidency notes out that the need for criminal measures in the field of intellectual property rights may be discussed irrespectively of the question of the appropriate legal basis and/or the nature of the future legal instrument (directive or framework decision).
[...]
Several delegations have underlined the necessity to make a distinction between rights under Community law and rights under national law. They are of the view that intellectual property rights which are not harmonised at the Community level should be excluded from the scope of the instrument. This view is closely related to the question of the competence of the Community legislature in adopting criminal measures. Several delegations have referred to the conclusions of the informal JHA meeting held in Vienna of 13 and 14 January in this matter (see point III).
Some delegations were nevertheless of the opinion that the scope of the instrument should be the widest possible and cover not only the rights harmonised at the Community level but also rights regulated only in national laws. They stressed the need to combat counterfeiting and piracy effectively at the Community level irrespective of whether the offences concern rights under Community law or rights under national law.
V. QUESTIONS
1) Do the Member States, irrespective of the legal basis of the future legal instrument, deem there to be need for further criminal law measures in order to protect intellectual property rights? Should the work await the evaluation process of Directive 2004/48/EC on civil law and administrative measures in order to clarify whether there is a need for criminal law measures?
2) Should the outcome of case C-440/05 between the Commission and the Council, currently pending before the Court of Justice, be awaited in order to clarify Community competence in the field of criminal law in different policy fields?
3) If the work with the Directive is to be continued at present, should this be done on the basis of the amended Commission proposal for a Directive or should the scope of the Directive be limited to the intellectual property rights harmonised in Community legislation?
The Article 36 Committee is invited to discuss the questions mentioned above."
The response of the Article 36 Committee appears not to be known yet.
BTW, the Law Society of England and Wales has provided comments on the Draft Directive:
"[...] The Society has a number of serious concerns about the Commission's amended proposal for a Directive on criminal measures aimed at ensuring the enforcement of intellectual property ('IP') rights (hereafter 'the Directive'). Such are the strength of these concerns that we would oppose the adoption of this Directive in its present form for the following reasons.
a. We do not believe that there is a sufficient legal base in the EC Treaty for all the provisions contained in the proposed measure. It is inappropriate for an EC Treaty measure to be so prescriptive in relation to criminal sanctions.
b. We do not believe it is appropriate or practicable for criminal sanctions to be extended to the full range of intellectual property infringements. For instance, we are very concerned by the extension of criminal sanctions into the field of patents.
c. We question whether there is a public interest in the EU adopting such a measure and whether sufficient thought has been given to its practical implications.
[...] As such, we would recommend that the current measure be limited to cover only matters of counterfeiting and piracy and not patent or design rights. The Commission should submit a new proposal for a framework decision containing some of the elements of the original measure proposed in 2005. A number of practical issues set out below will also need to be addressed before we could support the proposal. [...]"
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Dipl.-Phys. Axel H Horns is Patentanwalt (German Patent Attorney),
European Patent Attorney as well as European Trade Mark Attorney. In particular, he is Member of:
Document 11856/06 from the Presidency of the Council of the European Union to the 
