Counterfeit and Pirated Goods – New EU Customs Enforcement and “Applications for Action”
In 2012, Customs detained 40 million counterfeit articles with an estimated equivalent value of almost 1 billion euro, according to the European Commission. The marketing of these goods (which infringe intellectual property rights) causes financial and reputational damage to rights owners. They also deceive and in some cases, harm consumers.
To assist in combating the problem, the European Parliament approved a new Regulation (Regulation 608/2013) in June 2013 that extends the powers of Customs authorities to detain and destroy counterfeit or pirated goods.
The new Regulation came into force on 1 January 2014 and covers all Member States of the European Union. It:
- expands the range of IPR infringements covered
- adjusts procedures in order to reduce administrative burdens and costs
- ensures that high quality information is provided to Customs so as to enable better risk management
- includes measures to ensure that the interests of legitimate traders are protected
Counterfeit Goods and Pirated Goods
The new Regulation specifically covers the use of a sign on counterfeit goods or their packaging that is identical or confusingly similar to a registered trade mark. It also covers pirate copies of goods that are protected by copyright or design rights.
The Regulation provides rights holders with a simplified procedure for the seizure and destruction of counterfeit and pirated goods. The rights owner has to contact the declarant or holder of the suspect goods. If he fails to respond and the rights owner confirms to Customs that the goods are counterfeit or pirate goods, Customs may destroy the goods.
There is also an optional new procedure for small consignments of counterfeit and pirate goods, aimed at goods sold to consumers over the internet. Where a package contains up to 3 suspect items or weighs two kilograms or less, Customs can contact the declarant or holder of the goods directly and ask for the goods to be abandoned for destruction. Only if the declarant or holder objects to destruction of the goods does the rights owner need to get involved.
Rights owners will want to think carefully about using this procedure as they are only given updates on how many consignments of goods have been destroyed and therefore will not have any details of who is infringing their rights. However, if the rights owner finds dealing with small consignments under the main procedure too onerous, it may decide to opt in to using this procedure.
Applications for Action
Rights owners must submit an Application for Action (“AFA”) with Customs in order to benefit from the procedures set out above and get Customs to seize suspected counterfeit or pirate goods. Rights owners can submit a National IP AFA if it has national rights or only wants Customs to take action at the UK (or relevant national) border. They can also submit an EU AFA if they have an EU IP right and want Customs to take action in two or more Member States.
The AFA is then valid for one year, and can then be extended upon request. However, if the rights owner filed an AFA and it was granted before the new Regulation came into force, this AFA cannot be renewed. From, 1 January 2014, new applications for action must be submitted, which can thereafter be renewed upon request.
Our IP enforcement team is on hand to advise you on how best to protect your rights using Customs, the effect of the new Regulation and the associated revised AFA procedure.