It is worthless to say that infringement is ever increasing. A battle is engaged, involving all the stakeholders, to stop counterfeited and pirated goods, and to fight against infringement. Customs, as well as Legal procedures and resources are being continually improved.
In the E.U; National, European, case law decisions and IP laws are superimposed, establishing a complex but very efficient legal framework. A new EU Regulation, N° 608/2013 of 12th June 2013, entered into force on 1st January 2014 and the French Law N° 2015-315 of 11th March 2014, which came into force on 18th April 2015, have extended the control of Customs. The reform of the Community Trademark system will also contribute to strengthening the rights of the trademark owners by allowing, under certain conditions, the interception of goods in transit.
STEP 1: FILING A CUSTOMS RETAINER DECLARATION
Customs can more efficiently stop suspected goods if a Customs Retainer Declaration is filed and renewed annually for all the trademarks or designs which are frequently, and to a high level infringed or suspected to be.
- GEOGRAPHICAL SCOPE OF ACTION
The right holder can choose between (i) a National retainer procedure, and/or (ii) a Community retainer procedure covering the whole EU market.
- i.“National customs retainer procedure”
The request shall be submitted to the Customs of a given country, for instance France, it will be based on a national, Community or International trademark and/or design. French Customs can stop goods anywhere on French territory in relation to goods that have a community status, but only where the customs duties have already been paid.
- ii.“Community customs retainer procedure”
In this case, the application must be submitted directly before the EU customs, which offers a scope of action in the territories of all the 28 member states of the European Union. However, they can only stop goods on the EU borders. Such procedures can only be utilised for European Trademarks or Designs, or International Trademark or Design that designate the EU. The right holder needs to designate a local representative in each country to deal with any official communications with Customs. The customs detention procedures have recently been harmonized at the Community level and should now be the same from country to country. Only the costs may vary.
REGIMBEAU can either file the applications on behalf of your clients or be selected as Representative at the French and Belgian Customs.
- INFORMATION TO BE PROVIDED
In both instances, the information that needs to be provided is the same:
The initial declaration must include the following information:
(i)The list of IP rights for which Customs are required to intervene (Trademark /Design /Patent/Utility patent…);
(ii)Designation of 2 local contacts (administrative + technical) for the official communications and possible examination of the products at the Customs’ office;
(iii)All available information enabling Customs’ officers to easily identify counterfeit products: description of the genuine products (list of their characteristics and distinctive features, such as labels, internal references, holograms, usual packaging of the goods), pictures of the genuine products, the country(ies) where the genuine goods are manufactured and the name of the companies involved in the distribution network;
(iv)A PoA (Power of Attorney).
The declaration is typically examined and approved by Customs. It is then valid for one year during which Customs will notify the administrative contact each time that products believed to be counterfeit are stopped. The declaration must be renewed every year, 30 days prior to the expiration date.
REGIMBEAU can assist you in preparing the Declaration and filing it at the French, Belgian and EU Customs.
STEP 2: EXAMINATION, DETENTION AND DESTRUCTION OF COUNTERFEIT PRODUCTS
Customs routinely inform the administrative representative by e-mail that presumed counterfeit products have been stopped; they will then provide pictures along with the number of items.
A 10-day period is then opened allowing the right holder to analyse the products and confirm, or not, if they are counterfeit. If needed, this period can be extended once, for 10 additional days, but only if a strong explanation as to the reasons is provided.
- Communication of information
During this period, the right holder can officially request information about the sender (exporter) & addressee (importer) of the goods, and the origin of the shipment.
But by making such a request, the right holder undertakes to lodge a judicial action before the Court.
The right holder can also request to examine the goods at the Customs’ office and take samples at this time.
- Detention of the counterfeit goods
At the end of the 10-day period, Customs have to be informed in writing if the goods are to be considered as “counterfeit”, or not, together with detailed explanations to justify such conclusion. Otherwise, the goods will be released.
At this stage, if the goods are counterfeit the option of destruction of the goods is also offered to the right holder.
Through a “simplified” administrative proceeding, the destruction requested by the right holder is handled by Customs, provided that 3 conditions are fulfilled:
- The right holder confirms its conviction that their right has been infringed
- They must confirm in writing their agreement that the goods are to be destroyed
- The holder of the goods does not contest this request of destruction.
This destruction is undertaken by Customs without any judicial decision. Both the detention and destruction of counterfeit products are the right holder’s responsibility.
If destruction is requested, the right holder renounces the option to take legal action against the importer/exporter.
Destruction usually takes place within 2 or 3 months and is, at present, totally free of charge for the right holder when carried out in France. However, the right holder is not officially informed of the successful destruction.
If this request for destruction is contested, Customs will transfer the case to the Courts, who may then initiate a legal action.
REGIMBEAU can advise and assist you at any of these steps before Customs, go to examine the goods at Customs, and if necessary follow the destruction proceeding.
- Legal Proceedings or Release
When the products are counterfeit, but destruction has not been requested, legal proceedings either before the Civil or Criminal Courts can be initiated. They must be accompanied by a compensation demand from the right holder in the case that the infringement is not admitted by the Court.
If no legal action is initiated within the prescribed deadline, the goods will be released.
REGIMBEAU can advise you on the best legal action to undertake to defend your client’s interests and assist you during the legal proceedings.