The European Parliament has approved a new Regulation which will give Customs authorities extended powers to detain goods at the borders of the European Union.

Regulation No 608/2013 concerning customs enforcement of intellectual property rights will repeal the existing Regulation (No. 1383/2003) and will apply from 1 January 2014.

The practice and procedure relating to detentions by Customs authorities of suspected counterfeit and pirated goods at the borders of the European Union will continue as before; but the powers of Customs authorities to detain such goods will extend to:

  1. goods protected by a much wider range of rights, which will (in addition to identical trade marks, design rights, copyright, geographical indications, patents, supplementary protection certificates and plant variety rights) include confusingly similar trade marks, trade names, topographies of semiconductor products, utility models, devices to circumvent any technology and non-agricultural geographical indications; and
  2. small consignments, defined as postal or express courier consignments which (a) each contain three units or less; or, (b) each have a gross weight of less than two kilograms.

In our view, it should be possible to rely on the new Regulation, in certain very specific circumstances, to intercept counterfeit and pirated goods in transit. See separate note by Joe Cohen on our website.

The new Regulation will not apply to:

  • goods of a non-commercial nature contained in travellers' personal luggage;
  • 'grey' goods; or,
  • 'overruns', i.e. goods manufactured in excess of the quantities agreed between the right-holder and the manufacturer.

The procedure for applying to the Customs authorities to take action to intercept counterfeit and pirated goods will basically be the same as the current procedure. This entails the submission of a formal application by the intellectual property rights-holder (also certain other bodies and groups) to the Customs authorities in the EU to take action to detain goods protected by the specified IP rights. Customs will then suspend the release of the goods suspected of infringing an IP right, or detain them.

Following the suspension of release or detention of the goods, the 'simplified procedure' will come into play, resulting in the destruction of the goods; or, where there is no 'deemed consent' to destruction, the initiation of legal action by the IP rights-holder to determine whether the IP right has been infringed.

Use by IP rights-holders of the powers of the EU Customs authorities to take action is a very effective and relatively cost-effective way of fighting counterfeiting and piracy.