EU IP custom actions and cross-border IP rights protection

This article was produced by Olswang LLP, which joined with CMS on 1 May 2017.

Filing applications for EU custom action is strongly advised to secure cross-border IP Rights protection.

Statistics reveal the magnitude of counterfeit problems EU borders are facing, with 90,473 EU custom actions recorded in 2012, involving almost 40 million counterfeited goods, saving companies from a potential 1 billion EURO loss.

On 1 January 2014 the New EU Customs Enforcement Regulation No 608/2013 entered into force, replacing the former EU Custom Regulation No 1383/2003.

The EU Custom Enforcement Regulation provides for two types of custom actions in case of suspected counterfeit: (1) ex-officio actions (+/-3%); (2) actions based on earlier filed applications for action (+/-97%).

Under both procedures Custom Authorities detain the goods and notify the IP holder, or his representative, who has to confirm the counterfeit.

If the IP Holder confirms the infringement, the Customs will not release the goods, in which case the goods will generally be destroyed or - if the declarant, the holder or the owner of the detained goods opposes to the destruction - Court proceedings can be initiated.

In case of an ex officio action the IP Holder has 3 working days to confirm the infringement. In case an application for action has already been submitted previously, this delay is extended to 10 working days.

Advantages in filing applications for action are threefold: (1) no administrative costs are involved; (2) the IP holder is granted 10 days instead of 3 to confirm the counterfeit and thus to prevent the release of the counterfeits; (3) Customs Authorities will more easily recognize counterfeits since the client or its representative will have provided training for recognition beforehand.

This so-called Simplified Procedure foreseen in the EU Custom Regulation gives Custom Authorities the power to have the detained goods destroyed without any obligation for the applicant to initiate proceedings in order to have the alleged IP infringement confirmed by a Court.

Importantly, under the simplified procedure, Customs Authorities may presume that the declarant, the holder or the owner of the detained goods has agreed to their destruction where there has been no opposition to the destruction within 10 working days of notification.

The New Customs Regulation No 608/2013 strengthens the enforcement of intellectual property rights to the benefit of IP holders, the EU economy and consumer safety. It reinforces the EU Customs measures against counterfeit and pirated goods and makes it easier for these goods to be destroyed following their detention.

Worth noting are the following innovations compared to the former EU Custom Regulation No 1383/2003:

• Customs interventions now cover a wide range of intellectual property rights, including rights in relation to trade names, semi-conductor topographies, plant varieties and circumvention devices. Furthermore, the definition of counterfeit goods is extended to include packaging, labels, stickers, brochures and similar items identical or confusingly similar to a trade mark.

• A new common Custom Actions Application Form is introduced. This Application Form includes more detailed information as to the applicant's intellectual property rights and the original products, facilitating and stimulating the Customs Authorities to identify counterfeit goods.

• The Simplified Procedure has become compulsory in all EU Member States.
• • Most significant is the introduction of the Small Consignments Procedure. A small consignment is defined as a "postal or express courier consignment that comprises three units or less or has a gross weight of less than 2 kg". Customs Authorities now have the power to have small consignments of counterfeit and pirated goods destroyed without the need for the declarant, the holder or the owner of the detained to provide consent for each instance of destruction. For this, IP Rights holders simply have to opt for "Small consignment procedure" in their Custom Application Form. This new Procedure is a key benefit for right holders considering the massive rise in internet shopping and the resultant increase in small consignments.

Over the last decades Belgium has become one of the leading EU Countries in the fight against counterfeit and pirated goods. In 2012 there were 6,692 custom actions in Belgium for a total of 2,310,620 detained goods.

The fact that the port of Antwerp, EU's 2nd largest port, is dealing with more than 9 million containers per year, explains why Belgium is considered a frontrunner in this fight. The Airport of Brussels (Capital of the EU) is also dealing with a significant number of counterfeits and is doing an excellent job in protecting IP holders.

This short video, mavailable on the EU Parliament's website, illustrates the importance of EU Custom Actions, with a particular focus on Belgium.

Stats and Figures, included in the Report on EU customs enforcement of intellectual property rights - Results at the EU border 2012, published on http://ec.europa.eu, provides very useful information to support the analysis of IPR infringements in the EU and the development of appropriate counter-measures by customs.

These figures illustrate well the scope and the extent of the global problem EU Custom Authorities and IP Holders are facing, as well as the remarkable and increasing achievements made in the EU fight against counterfeit and piracy.

How Olswang can help

Olswang ensures a close relationship with key EU Customs Authorities, which ensures that efficient custom actions can be considered.

We strongly encourage all IP holders to file applications for Custom Actions with the Belgian and other EU Custom Authorities.

At Olswang we are able to provide adequate advice and help with filing Applications improving Custom Authorities in their combat against counterfeit, which is undoubtedly beneficial to IP holders' businesses.

Contact

Please let us know whether you would like additional information or a discussion with us in respect to EU Custom Actions.