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New regulation concerning customs enforcement of Intellectual Property rights

The European Parliament has recently approved a new regulation which will confer to Customs authorities extended powers to detain goods at the borders of the European Union.
Regulation 608/2013 of 12th June, concerning Customs enforcement of intellectual property rights, repeals the current Regulation 1383/2003 and will be in force as of 1st January 2014.

The practices and procedures concerning the seizure, by the Customs authorities, of suspected counterfeited and pirated products at the European Union’s borders remain unchanged.

The most relevant changes introduced by this new regulation concern mainly the broadening of the range of goods that the Customs authorities may retain.

Thus, in addition to trademarks, design rights, copyright, geographical indications, patents, supplementary protection certificates and plant variety rights, the powers of the Customs authorities are also extended to goods infringing trade names, topographies of semiconductor products, utility models, devices which are primarily designed, produced or adapted for the purpose of enabling or facilitating the circumvention of technological measures.

On the other hand, the intervention of the Customs authorities shall be extended to goods dispatched by small consignments, i.e, by mail or by courier, containing three units or less, or which have a gross weight of less than two kilograms. However, out of this new regulation are:

(i) goods carried by passengers in their personal luggage, provided that such goods are for their own personal use and that there is no indication that they are meant for being commercialized.

(ii) infringements resulting from the so-called illegal parallel trade and overruns, that is, products manufactured in quantities exceeding those agreed between the right-holder and the authorized manufacturer.

The procedure to apply for the intervention of the Customs authorities in case of counterfeited and pirated goods remains basically the same. It means, therefore, that it is necessary to submit a formal request by the holder of the intellectual property rights to the Customs authorities of the European Union in order for measures to be taken – retention of goods suspected of infringing the specified intellectual property rights.

Following the detention of goods, the “simplified procedure” as established by Regulation No 1383/2003 will be triggered, resulting, in most cases, in the destruction of the retained goods.

The use of these requests for action to the Customs authorities of the European Union, by the holders of intellectual property rights, has proved to be a very efficient mechanism to combat counterfeit and piracy; witch is now reinforced with the present broadening of the scope of action of the competent authorities.

Carmen Sánchez-Puelles