The Goods Infringing Intellectual Property Rights (Customs) (Amendment) Regulations 2010, which simplify the procedure for the destruction of infringing goods intercepted by Customs, were laid before the UK Parliament on 16 February 2010 and came into force on 10 March 2010. Under the new regime, Customs may deem goods to be "abandoned for destruction" if the importer is notified that the goods are counterfeit and he does not respond within a 10-day period.

BACKGROUND

The new Regulations amend the Goods Infringing Intellectual Property Rights (Customs) Regulations 2004, which implemented Regulation 1383/2003/EC on goods suspected of infringing intellectual property rights. Until last year, Customs officials would detain goods at the border and, if they were confirmed by the rights holder to be infringing, would seize and destroy them unless the owner of the goods appealed. In Revenue and Customs Commissioners v Penbrook Enterprises Ltd [2008] NIMag 2, however, the Belfast Magistrates' Court found that the procedure did not comply with the EC Regulation.

In response, Customs tightened up their procedure such that counterfeit goods could only be detained for a period of 10 days, during which the rights owner must instigate legal proceedings. If legal action was commenced, then Customs could continue to hold the goods, but could not seize and destroy them unless the rights owner obtained judgment against the importer, including a court order requiring the relevant Customs office to destroy the goods in question, or the importer abandoned the goods.

Customs' new stance increased the burden on rights owners but also led to counterfeit goods being released back to the importer because it was not economically justifiable to the rights owner to bring legal action in relation to a handful of items.

THE NEW REGULATIONS

The new Regulations introduce a simplified procedure whereby counterfeit goods can be deemed abandoned for destruction if the importer does not respond within the 10-day period to notification that the goods have been detained and the rights owner has confirmed that they are indeed counterfeit. The cost of destruction is to be borne by the rights owner.

COMMENT

The problem with the old regime was not that the 2004 Regulations went beyond the scope of the EC Regulation, as the EC Regulation provided expressly for a simplified procedure as implemented in the new UK Regulations. The problem was that the 2004 UK Regulations did not implement this simplified regime expressly, but Customs acted as if they did so. The new Regulations remedy this situation.