Customs Action Against Goods Suspected of Infringing Intellectual Property Rights
A procedure set forth in European Regulation No. 608/2013 enables right holders to apply for customs action against goods suspected of infringing intellectual property rights.
The holder of such rights valid in one or more European Union member states may request customs authorities to prevent the entry into those European Union member states of goods infringing his rights.
Customs action against goods suspected of infringing intellectual property rights may be requested in one, or more, the member states of the European Union in which the right is in force.
Which Kind of Intellectual Property Rights are Concerned
Applications for customs action may be based on trademarks, designs (registered or unregistered), copyrights, patents, supplementary protection certificates, plant breeder’s rights, protected denominations of origin, protected geographical indications and trade name, if eligible for protection as an intellectual property right under national or EU law.
Proof of Validity of Intellectual Property Rights Within the EU
The application must contain proof of validity of intellectual property rights within the territory concerned, that is documents showing that the applicant is the holder of the intellectual property rights on which the application is based, and that the rights in question are valid in the European Union member state(s) in which customs action is requested.
Who May Apply
Holders of intellectual property rights that are valid in any, or all, member states of the European Union may apply for customs action.
Information Necessary to Distinguish Infringing Products from Originals
The application for customs action must be accompanied by information necessary to distinguish infringing products from originals, such as:
- an accurate and detailed technical description of the goods (i.e. photographs and description of the original product and packaging)
- the name and address of the contact person appointed by the right holder
- a list of authorised manufacturers
- country or area of provenance of the infringing goods
- possible recipient(s) of the infringing goods
- any specific information the right holder may have concerning the type or pattern of fraud.
Where to File the Application
The application must be filed with the customs authority of the European Union member state(s) in which action is requested, or with the customs authority of one member state only, but with extension to all European Union member countries if the right concerned is a European Union-wide right (e.g. a trademark of the European Union or Community design).
Customs Suspends Release of Goods
When a customs office identifies goods suspected of infringing intellectual property rights for which an application for customs action has been filed, it suspends the release of the goods and detains them. The right holder is informed of the suspension and invited to inspect the suspect goods.
The term of the suspension is of 10 working days, and may be extended by another 10 working days maximum if necessary. In the case of perishable goods, the term is of 3 working days only. Within these terms, the right holder must assess whether or not the suspect goods infringe his intellectual property rights and submit to the customs office a written declaration confirming the infringement. Where no written declaration is submitted, the customs office may release the goods.
Right Holder Must Institute Legal Proceedings
Within 10 working days of the beginning of the term of suspension (3 working days in case of perishable goods), the right holder must institute legal proceedings, requesting a court to confirm the seizure of the infringing goods. Under Italian law, the infringement of intellectual property rights is a criminal offence; therefore, when an Italian customs office receives the right holder’s declaration confirming the infringement, the judicial authorities are notified and criminal proceedings are started automatically.
Duration and Renewal
The application for customs action has a one-year duration and renewal is possible.
Customs Authorities May Take Action Even in the Absence of an Application
Customs authorities may take action even in the absence of an application if they have sufficient grounds for suspecting that goods infringe an intellectual property right. Customs may ask the right holder to provide them with any information they may need to confirm their suspicions, and may suspend the release of the goods or detain them for 3 working days in order to enable the right holder to submit an application for action.