Select Committee on European Legislation First Report


LEGAL PROTECTION OF DESIGNS

15.   We have given further consideration to the following on the basis of a second Supplementary Explanatory Memorandum. We maintain our opinion[32] that it raises questions of legal and political importance, but now make no recommendation for its further consideration:--

DEPARTMENT OF TRADE AND INDUSTRY

(17084) 5505/96 COM(96)66	Amended proposal for a Directive on the legal protection of designs.
Legal base:	Article 100a; co-decision; qualified majority voting.

Background

15.1  We have reported on this proposal twice before. On the last occasion we expressed continuing concern about the possible implications of a new Article 16a which had been proposed by the European Parliament. The new Article would require a Court of the Member State, in certain circumstances, to require the provision of information by an accused person on the source and distribution chain of allegedly infringing goods forming the part of any infringement action. In our last Report we noted that the Government was still considering the possible implications of the new Article 16a and we asked the Minister to let us have a further Supplementary Explanatory Memorandum when his deliberations were concluded.

The Minister's response

15.2  The Minister, the Parliamentary Under-Secretary of State for Science and Technology at the Department of Trade and Industry (Mr Ian Taylor) has now responded in a second Supplementary Explanatory Memorandum dated 10 October, in which he says:

"The purpose of the proposed Directive itself is to harmonise certain substantive provisions in the laws of Member States on the protection, by registration, of industrial designs. Article 16a is intended to facilitate the exercise of these design rights against alleged infringers by empowering national courts to demand information from an alleged infringer at the request of the right holder, on the source and distribution chain of goods which are alleged by the right holder to infringe a (registered) design right. Whether this can be treated as a harmonisation matter falling within Article 100a (EEC) which is the legal base for the proposal, has now been considered more fully. Firstly, there exists precedence for EC legislation to empower a Court to order that information be provided by a party to proceedings (for example, Article 6 of the Misleading Advertising Directive: 84/450) which has been treated as a not unacceptable inroad into United Kingdom civil procedure. Secondly, Article 16a of the draft Directive is designed to ensure the effective legal protection of designs in order to achieve the objective set out in Article 100a in that it harmonises those disparities between the laws of Member States which were liable to hinder the free movement of goods within the Community and therefore may be adopted under that Article."

Conclusions

15.3  We have a number of observations. We note that the Minister talks about "empowering" the Courts to demand information; but as we read it, Article 16a does not simply empower the Court, it requires the Court to order a person to provide information unless there are special reasons for not doing so.

15.4  We accept that there is power to adopt an enforcement provision on the lines of Article 16a under Article 100a of the Treaty. But in our last report we also raised doubts whether the proposed article was in accordance with the third limb of Article 3b of the Treaty which is concerned with proportionality. In the absence of a specific comment in the Minister's SEM we assume that he is content. We remain unconvinced, but we do not recommend a debate solely on this narrow point.

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32. (17084) 5506/96; see HC 51-xvii (1995-96), paragraph 4 (24 April 1996) and HC 51-xxi (1995-96), paragraph 2 (5 June 1996). Back

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Prepared 12th November 1996