Owners of intellectual property rights have welcomed the new procedure that provides for expeditious suspension and destruction of infringing goods entering the UK, where they are “abandoned” by the importers or owners.
Until recently, two distinct regimes applied to goods infringing intellectual property rights seized on the UK border, depending on the type of the intellectual property right being infringed.
Goods suspected of violating the rights of a patent holder would not be detained by HM Revenue and Customs (Customs) unless court proceedings were initiated by the right holder within ten days of the goods entering. A simplified procedure existed for pirated and counterfeit goods (i.e. goods infringing rights of the owners of trade marks or copyright). This procedure allowed for the goods to be suspended and destroyed on the basis of a witness statement, provided that there were no objections from the owners of the goods (i.e. they were “abandoned”) (the Simplified Procedure).
Following the decision in HMRC v Penbrook in December 2008, Customs announced withdrawal of the Simplified Procedure as it did not comply with the requirements of Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights. It was suggested that a unified regime be introduced to deal with all goods violating intellectual property rights regardless of the applicable right infringed. This meant that no goods would be seized and/or destroyed unless court proceedings were initiated by the affected right holder.
The announcement of the above procedure provoked a protest amongst owners of trade marks and copyrights, because the Simplified Procedure, which offered a straightforward and cheap means of preventing counterfeit goods entering the UK, was to be substituted by a more complex and costly method involving the need to start court proceedings within a specified time frame.
However, the Goods Infringing Intellectual Property Rights Customs (Amendment) Regulations 2010 (the 2010 Regulations), which came into effect on 10 March 2010, set out a new simplified procedure, whereby the regime for all infringing goods reverts to a procedure similar to the Simplified Procedure, with certain amendments (the New Simplified Procedure). In accordance with the New Simplified Procedure, the goods are considered to be abandoned for destruction, if:
- the right holder has informed Customs in writing within ten days that it believes that those goods violate its intellectual rights; and
- either there is a written agreement of the holder or owner of the goods that the goods may be destroyed, or the holder or owner of the goods has not opposed destruction of the goods within ten days.
The New Simplified Procedure applies to all goods infringing intellectual property rights, including those relevant to the rights of patent holders.
It is important to note that if the two conditions of the New Simplified Procedure are not satisfied, then court proceedings become necessary for the goods to be detained and/or destroyed.