At the borders of the European Union, customs authorities are on the front line in preventing counterfeit goods from entering the domestic market. In 2011, EU customs officials intercepted no fewer than 115 million items, with a value of about 1.3 billion euros.

On 12 June 2013, the European Parliament and the Council adopted a new version of the Regulation concerning customs enforcement of intellectual property rights, which will come into force on 1 January 2014 (Regulation No. 608 / 2013). The new law strengthens the current system and bolsters customs’ arsenal.

An outline in four questions.

Who can request customs intervention?

Any holder of a valid intellectual property right may seek intervention by customs. In addition to copyright, trademarks, designs, patents and plant variety rights, customs authorities can now intervene in cases of infringement of a trade name, topographies of semiconductor products, or even devices designed to circumvent technical measures for the protection of rights. This last category is particularly aimed at chips that make it possible to circumvent blocking systems built into games consoles.

How should applicants proceed?

The right holder has to file an application for the customs authorities to take action. For rights having effect throughout the European Union, such as trademarks and Community designs, a single application will secure intervention by all customs authorities in the Union.

What measures can customs take?

When suspect counterfeit goods are detained by customs, the right holder is notified and has the opportunity to inspect them. Three options are available to him:

  1. If he considers that the goods do not infringe his rights, they are released.
  2. If they are indeed counterfeit, he may seek their destruction under customs supervision, without having to initiate judicial proceedings. To do this, it is sufficient to obtain the agreement of the recipient of the goods or the carrier from which they were seized. This agreement will be presumed in the absence of an objection by the recipient or carrier. This simplified procedure has already been applied by many Belgian customs authorities and is rendered obligatory by the new regulation.
  3. In the absence of express or presumed agreement, the right holder requires to bring an infringement action, otherwise the goods will be released.

The major innovation of the new regulation is the introduction of a fast-track procedure for small mailings, which goes hand in hand with the growth of electronic commerce.

This procedure allows the destruction of suspect counterfeit goods without involving the right holder, provided the recipient or carrier agrees to destruction. Again, agreement is presumed in the absence of objections by the recipient or carrier.

Finally, the new regulation provides for the establishment, in 2015, of an electronic database to centralise the information available to European customs authorities.

What costs are there for right holders?

No fee is required from right holders to cover the administrative costs incurred in processing the application for intervention. However, they do bear the costs of storage and destruction of the goods.

Thanks to the “simplified” and “accelerated” procedures, customs intervention provides a fast, economical tool to fight imports of counterfeit products into the European Union at source.

However, the simplicity of the system is commensurate with its scope. At this stage, customs authorities are not empowered to intervene in complex situations such as parallel imports or goods in transit through Europe. These issues should be addressed in the new brand rules currently being developed. To be continued, therefore.