The Italian Customs Agency (the agency) is the body in Italy responsible for taking action against counterfeit goods or those suspected of infringing intellectual property rights (IPR) in relation to Council Regulation (EC) No. 1383 of 22 July 2003 (the basic regulation).
The agency exercises its power of intervention when goods suspected of IPR infringement are released into free circulation, are imported or exported, or are discovered during an investigation or dawn raid on goods entering or exiting the European Union. The temporary suspension from free movement within the European Economic Area (EEA) of such goods is an increasingly popular and cost-effective device to prevent infringing goods from entering the EEA.
Applications for Customs Monitoring
According to Article 4 of the basic regulation, the agency may exercise its power of intervention ex officio or on the basis of a submission by the IPR holder of an application for a custom monitoring action by the customs authorities.
Right holders, authorised persons or a representative of the right holder may file an application for customs monitoring. The right holder may act to request customs monitoring of trademarks, copyright or related rights, industrial designs, patents and utility models, supplementary protection certificates, plant variety rights, protected designation of origin and protected geographical indications.
An application for intervention by the agency could protect EU and national IPR, or international rights within the European Union. Whatever the aim, the application should contain an accurate description of the goods, any specific information regarding the supposed infringement (such as country of origin and route of the goods), the details of the contact person appointed by the right holder and the applicant’s declaration referred to under Article 6 of the basic regulation to assume civil liability for any possible damages that might be caused to any third parties affected by the actions of customs.
Should the application be limited to Italian trade marks only, the right holder should include a copy of the trade mark registration issued by the Italian Patent and Trademark Office or a copy of the application filed at the time of the trade mark registration. In the case of a Community Trade Mark (CTM), the right holder should file a copy of the CTM registration certificate. The holder of an international trade mark should enclose the copy of the international registration certificate issued by the World Intellectual Property Organization.
The right holder also must file evidence of the registration or deposit of the IPR issued by the relevant authority. With regard to copyright and related rights, or non-deposited or registered design rights (such as the Community non-registered designs), evidence of the authorship should be provided. The holder of a plant variety right must submit a certificate issued by the relevant Community Plant Variety Office or by the relevant national authority. Finally, with regards to protected appellations of origin and protected geographical indications, it must be proved that the applicant is the manufacturer or the controlling association thereof, and that the appellation or indication has been registered. The same rule applies to wines and spirits.
Where the applicant is the owner of a CTM, a Community design, a Community plant variety right or a Community protection of an appellation of origin or geographical indication, the application may seek not only the intervention of the national custom authority of the Member State where it was submitted, but also that of the customs authorities of other Member States (a Community application). In this case, the applicant must nominate the States that it would like included and the details of the contact persons in each of those States.
According to Article 8 of the basic regulation, both the national and Community applications for custom monitoring are valid up to a maximum of one year and can be extended. In the case of Community applications, the applicant should forward any relevant documentation to the customs authorities of the Member States that practice custom monitoring.
Detention and Suspension of Free Movement
Even if the right holder has not filed an application for customs monitoring action, if the customs offices have sufficient grounds for suspecting that certain goods infringe an IPR, they may still detain the consignment. This detention is a “suspensive procedure” under Article 84 (1) (a) of the Community Customs Code. The suspected goods can be held for a period of three working days, a period which commences once the IPR holder and the holder of the goods (if known) are notified. This enables the IPR holder to submit an application for custom monitoring. Customs offices may also ask the right holder to provide them with any kind of useful information they may need to confirm their suspicions regarding the infringing goods. If the right holder does not answer this request for information, the suspected goods are released for free circulation.
Both the right holder and the declaring party or holder of the goods are informed of the detention of the goods suspected of infringing the IPR and are requested to appoint an expert to examine them. Following a request by the right holder, the customs officers may take samples of the goods suspected of infringement for analysis in specialised laboratories.
The suspension of the goods, or their detainment, may last 10 working days as of the date of notification. For perishable goods, the detention or suspension period is limited to three working days without any possibility of extension. In the case of goods suspected of infringing industrial design, patents, plant variety rights or supplementary protection certificates, the owner of the goods, the importer or the consignee may obtain the release of the goods on provision of a security, provided that all customs formalities have been carried out and the customs authority has been notified of the commencement of a judicial procedure to ascertain whether IPR has been infringed. Should a criminal prosecution arise out of the investigation, the customs office must inform the judicial authority.
In order to make the customs authorities’ power of intervention more effective, the agency has initiated the Fully Automated Logical System Against Forgery and Fraud (FALSTAFF). This initiative is intended to implement an information system to manage the selection of goods to be controlled and provide support to customs officers while performing a control operation. Required information will be provided by the relevant trader associations, and right holders will provide information in relation to the infringement of goods.
FALSTAFF will become part of the Italian Customs Information System, AIDA. AIDA involves the automation of more than 400 customs offices in Italy.
Once the FALSTAFF system becomes effective, the applications for customs monitoring will be submitted via electronic data interchange in accordance with the provisions governing the conditions and technical procedures for applications. The system will also allow the management of customs and excise operations, and offer an e-learning system and knowledge base for training purposes.