The  new  European  Union  customs  enforcement  regime  for intellectual property rights came into effect on 1 January 2014. The new regime simplifies the  process of detaining and destroying infringing goods and expands the intellectual property rights a  rights holder can rely on to have goods detained.

BACKGROUND

As with the previous regime, the new regime establishes the framework under which a rights holder  may notify national customs authorities of goods that it suspects infringes its intellectual  property rights, and to allow the national authority to detain these goods. The new regime is set  out in Regulation (EU) No 608/2013, which also repeals the previous customs regulation. The new  Regulation was accompanied by new standard forms to notify customs of suspected infringing goods.  The European Commission has also published new guidance on these forms to assist rights holders.

THE NEW REGIME

One of the key changes is that the process of determining a complaint by a national customs  authority has been simplified. The optional simplified process under the  previous regime, which  allowed for the destruction of infringing goods without the need for a court order, but was not  adopted by all national customs authorities, is now mandatory. In addition, there is a new  procedure to deal with small quantities of infringing goods targeted at the import by consumers of  counterfeits purchased online.

The new regime also increases the intellectual property rights that a proprietor may rely on to  have goods seized by customs. These now include trade names (as opposed to registered trade mark  rights) and semiconductor topographies. Rights holders can also request that customs seize goods  that are designed to circumvent their rights, such as devices to remove copy protection from a  product.

The guidance document is a step-by-step guide to enable rights holders to use the new regime  effectively. It also explains how to file a request for an extension to the period during which the  customs authority must take action.

COMMENT

Rights holders should welcome the new regime, especially given that the simplified procedure from  the old regime is now mandatory. The new regime does, nevertheless, still leave  a number of issues  unresolved.   One example is the treatment of goods in transit to a market outside the European Union.  Rights holders must still demonstrate that there is a substantial likelihood that these goods will be rerouted for sale within the European Union for customs to be able to act.  In addition, the new regime does not address the issue of parallel imports or circumstances where a  licensee has produced more goods than the licensee is entitled to under an agreement with the rights holder.