Custom watches and seizure of counterfeit goods

Our firm, Biesse, provides assistance in requesting customs surveillance and seizure activities. The request for intervention of the customs authorities regarding goods suspected of infringing intellectual property rights can be submitted at a national and European Union (EU) level. During the phases of seizing and blocking intercepted goods, our staff may intervene to assist the customs officers in charge to find evidences of the infringement.

On January 1, 2014, the new Regulation (EU) No. 608/2013 of the European Parliament concerning customs enforcement of intellectual property rights came into force on the territory of the European Union (EU).

According to the transitional provisions of the Regulation (EU) No. 608/2013, all customs watch applications approved under the repealed Council Regulation (EC) No. 1383/2003 may no longer be extended, but must be filed anew.

The new EU Regulation No. 608/2013 introduces significant amendments in terms of preparing and filing new national or community (EU) customs watch applications, and also in terms of customs proceedings for the detention of goods suspected of infringing IP rights.

First of all, the new EU Customs Regulation expanded the scope of protection of rights to also include trade names, topographies of semiconductor products and utility models.

Moreover, the Declaration by which the right holder accepts liability under the conditions laid down in Article 28 of the Regulation and accepts to bear the costs as referred to in Article 29, is now incorporated in the application form and does not need to be signed separately as under the old EU Council Regulation (EC) No. 1383/2003.

In addition, the so-called simplified customs procedure, according to which counterfeit goods may be destroyed with the implied or expressed consent of the holder of the goods, is now more strict and obligatory. The destruction request must be filed within the 10 working days period only, except in cases of perishable goods. The deadline is calculated from the date of the receipt of the suspension notification – Article 23 of Regulation (EU) No. 608/2013. The extension of the deadline is now possible only when the consent to the destruction is not given and the procedure to determine the infringement must be initiated before the competent authority. To avoid the overlapping of deadlines, the Customs will now notify the IP right holder about the detention only after the holder of the infringing goods is notified and their 10 working day period for the consent to the destruction had already started.

Furthermore, it has been now introduced the so-called "small consignments procedure", regulated by Article 26. Small consignments are defined as postal or express courier consignments that contain three units or less or that weigh less than two kilograms. The goods detained under this procedure may be destroyed without the customs office notifying the right holder, if the right holder requested this procedure in the customs watch application. However, upon destruction, the right holder must cover the destruction costs.

Article 6(3) of the Regulation (EU) No 608/2013 and Commission Implementing Regulation (EU) No. 1352/2013, requires the right holders to include a more detailed description of genuine goods (points 12-16 of the prescribed application form). The right holders now have to include the description and the value of all genuine goods, their distinctive features, the Combined Nomenclature (CN) tariff numbers, places of production, involved companies, and authorised traders.

The simplified procedure and the small consignments procedure will be fully applied as stipulated by the EU Regulation No. 608/2013. All customs offices in the mentioned countries also confirmed that the detailed description of genuine goods, as requested by Article 6(3)(g)(h)(i) of the Regulation (EU) No. 608/2013, must be included in the application form, i.e. the fields 12-16 of the prescribed application form may not be left empty.

In cases of ex officio detentions, where the right holder needs to fill out the application for customs action within four working days after being notified of the detention, the right holder may also file a national customs application, which does not ask for such a detailed description of the genuine goods as requested by Article 6(3)(g)(h)(i) of the Regulation No. 608/2013. However, such application will only apply to a particular detention and will not stay in force for 12 months, unless the right holder provides the requested information within 10 working days from the receipt of the detention notification.

Finally, the EU national customs authorities are now using the new centralised automated customs database - COPIS. The COPIS system enables national customs authorities to process all customs watch applications and cases directly through this system where all relevant documents and details related to customs watch applications are stored.