What customs procedures are available to stop the import and/or export of infringing goods?
Intellectual Property (2nd edition)
Customs procedures for seizing or preventing the importation and/or exportation of infringing goods are governed by the French Intellectual Property Code. In this respect there is two courses of detention procedures.
First of all, the detention may be carried out by the customs administration at the written request of the IPR owner or its exclusive licensees by filling a specific form before the Customs.
Customs shall then withhold in the course of its inspections any goods allegedly infringing proprietary rights.
Once the customs has retained the suspicious infringing products, a notification is immediately sent to the applicant (IPR owner), the holder of the suspicious products and the Prosecutor.
Following this notification and within a delay of three to ten working days (depending the nature of the goods) from the receipt of the notification, the applicant must either:
- request the destruction of the goods in application of the simplified destruction procedure;
- justify to customs one of the following measures have been initiated:
- filing a complaint with the public prosecutor;
- initiating an action before the civil or the criminal courts;
- requesting before the competent court seizure.
The withholding measure is automatically lifted if the IPR owner fails to establish that such measures have been taken. However, at the request duly motivated of the applicant, customs may extend the time limit for ten days.
Second, the detention may also be carried out by the customs administration themselves in the absence of any written request from the owner. In such case, the customs immediately notifies the IPR owner. Following this notification and within 4 working days from its receipt, the IPR owner must file a written request for intervention and follow the same requirements as above mentioned.
In case of suspicion of infringing imported/exported goods, the Customs Administration can temporarily withhold the goods on its own initiative and inform the rights' owner.
The rights' owner can also request the Customs Administration to seize allegedly infringing goods. The applicant must provide all information necessary to the Customs Administration's decision. If the Customs Administration has reasonable grounds to suspect that the goods are counterfeits, it will seize them and inform the rights' owner and the infringing goods' owner. The Customs Administration can withhold the goods for a maximum of 10 working days, within which the rights' owner will have to obtain a preliminary injunction from the competent judge. Within the same deadline, the infringing goods' owner must oppose destruction of the goods if such destruction was requested by the rights' owner.
Yes. An owner of intellectual property rights may file an application for action by customs authorities. The application may either concern Poland or several EU member states.
Under this procedure, when customs authorities identify products which they suspect infringe IP rights, they detain them and contact the rights owner. The rights owner is allowed to commence action against the infringer.
The IP owner may seek the assistance of the Italian customs authority to prevent the importation of counterfeit products.
In this regard, the European Parliament and the Council have introduced Reg. 608/2013/EU repealing the earlier Reg. 1383/2003/CE. The new Regulation, which took effect on 1 January 2014, creates procedural rules for customs authorities to detain counterfeit or pirated goods. In particular, in order to protect its rights, the IP owner can activate the customs surveillance by filing an application in writing before the customs Authority providing accurate and detailed information of the original products. Therefore, if the customs Authority has valid grounds to suspect that infringing goods are going to be introduced in the market or detect infringing goods at the border, it will proceed immediately, suspending the release of those goods for a limited period of ten days. After that period, the customs Authority may proceed to the destruction of the infringing goods if the owner of the suspected products does not file an objection or agrees with the decision of destruction. Further, the customs authorities may act not only when requested by the copyright-holder, but also on their own initiative. Therefore, if they suspect that counterfeit goods are going to be introduced and marketed, they will suspend the release of those goods.
Under circumstances, the customs authorities may be entitled to seize goods from being import into Cyprus. An application can be filed to this end at the Department of Customs and Excise for border control of goods entering into the market which are suspected of infringing the intellectual property rights of the applicant. The application can be either national or European.
The above applies in Cyprus pursuant to the Regulation (EU) N. 608/2013 concerning customs enforcement of intellectual property rights and covers Patents (and SPCs), Trade marks, Trade names, Geographical indications, Plant varieties, Topography of semiconductor products, Copyrights and Designs.
The customs enforcement of intellectual property rights cannot be used however, to goods:
- that have been released for free circulation under the end-use regime
- of a non-commercial nature contained in travellers’ personal luggage.
- that have been manufactured with the consent of the right-holder or to goods manufactured, by a person duly authorized by a right-holder to manufacture a certain quantity of goods, in excess of the quantities agreed between that person and the right-holder.
If it is not possible to secure the destruction of the products at customs level, Court proceedings should be commenced to determine whether the intellectual property right has been infringed, otherwise the products would be released.
Customs procedures are available for infringement of trademarks, copyrights, and designs, but not patents.
Border measures in Trademarks:
According to the Customs Ordinance, the Customs Authority is entitled to detain imported goods that are suspected of infringing trademarks. It is possible, though not mandatory, for rights holders to file a complaint while recording their registered trademarks with Customs. It is highly recommended that such a complaint be filed if the rights holder is aware of specific shipments of infringing goods bound for Israel or if it wishes to bring certain trademarks to the attention of Customs. The following documents must be submitted with a complaint filed with Customs:
- A guarantee in which the trademark owner undertakes to indemnify Customs and/or the importer for any unjust damages;
- Photographs and/or catalogues of goods depicting the trademark, in order to enable Customs to distinguish genuine goods from infringements;
- Power of attorney; and
- Specific information regarding the importer and country of origin of the infringing goods, if available.
Notwithstanding the above, Customs is authorised to seize suspected goods (whether as a result of a complaint submitted by the rights holder or as a result of a random examination of shipments arriving in Israel). Once such goods are seized, Customs must send appropriate notice to the rights holder and the importer.
In most cases the rights holder must submit a bank guarantee to Customs in order to compensate the importer for any financial damage that may be inflicted as a result of the seizure or the filing of a lawsuit. Upon receiving notification, the rights holder has three working days (an extension of three working days is available) in which to respond. He may either submit the required bank guarantee or request a three-day extension in which to submit it. Only after the bank guarantee has been submitted will Customs advise the rights holder of the importer’s details and allow them to obtain a sample of the seized goods.
Where the goods are indeed counterfeit, the rights holder can either settle the matter amicably with the importer or file a lawsuit against it within 10 working days of the notice date (an extension of 10 working days is available upon filing a reasoned request). Should the rights holder choose to take no further action, the goods will be released.
In some cases, Customs may agree to destroy the goods based on a written opinion submitted by the rights holder, in which he indicates the reasoning behind its belief that the goods are indeed infringing and an undertaking that the rights holder will compensate the importer for any financial damage that may be inflicted as a result of the seizure, as well as to join Customs in any lawsuit initiated by the importer. Such circumstances include the following:
- The goods are in a small shipment which includes several brand-name goods;
- The shipment is suspected of violating the rules of legal imports; or
- The goods arrive in a parcel through the mail.
Border measures in copyrights: are similar to the measures taken in trademarks infringement, yet extremely rare.
Border measures in design: according to the new law, Customs may detain suspected goods, following owner request. This provision does not apply to goods imported for personal use.
Chilean law allows the holder of a copyright or registered industrial property right to request in writing the suspension of the release of the merchandise that violates his rights for a period of 10 days. This request must be filed with the civil court which corresponds to the location of the customs office where the infringing merchandise is presumed to be arriving.
The suspension of the dispatch of the merchandise can also be decreed ex officio by the customs authority when it is evident from a simple examination that the merchandise is a falsification of a trademark or an infringement of a copyright or patent of invention, among others. In these cases, the authority must inform the owner of the right of the possible infringement.
Finally, the owner of the industrial right or the injured author must file a complaint or a restraining order requesting that this measure be maintained within the following 10 days as of the notification of the suspension of the dispatch. If it is not presented, the measure will be left without effect.
The EU Customs Regulation (EU) No. 608/2013 is directly applicable in Greece and sets out the domestic customs intervention procedure. Owners of Greek trademark registrations may file a National application for action, whereas owners of EU marks may file a Union application for action in any member state, requesting the customs authorities of that member state as well as the customs authorities of any other member states to take action in their respective territories.
It is worth noting that, according to Greek Trademark Law, counterfeit goods that are in transit in Greece are considered to be infringing goods that may be seized by the Customs and destroyed.
An IP owner seeking to prevent the importation into the UK, from outside of the EEA, of products infringing its IP rights can file a customs notification with the UK's HM Revenue & Customs. An application is valid for a year, after which it must be renewed.
The more information the rights owner is able to provide, the more likely it is that customs will be able to identify and stop infringing products. In addition to details of the IP rights in question, the notification may include information such as barcodes and images of legitimate products. Particularly in respect of patents, it can be difficult for customs authorities to ascertain whether any given product infringes the right(s) in question. The patent owner can improve the chance of infringing products being detected by customs if they provide customs with a simplified description of the patent and the infringing products.
When suspected infringements are identified, customs authorities will detain the goods and contact the rights owner and owner of the goods. The rights owner is then able to inspect the goods to ascertain whether its rights are infringed, and court action may be commenced. There are special provisions for small consignments, which allow customs to simply inform the owner of the goods that they intend to destroy the goods and if the owner consents or fails to respond, customs will destroy the goods after 10 working days.
An IP owner making a customs notification is required to accept liability for any damage that is suffered by the owner of the goods in respect of goods that are seized, but do not, in fact, infringe the IP owner's rights.
Right holders with valid grounds for suspicion that goods being imported into Pakistan are infringing its rights under the copyright or trademarks laws, may make an application at the time of arrival of suspected goods at the notified customs station on the prescribed format to the Director of IPR Enforcement having jurisdiction, requesting for initiating enforcement action against such goods likewise when such goods infringe the provision of patents, designs and integrated circuit layout design laws, the right holder or the collector of customs, as the case may be, shall follow the same course of action as well. The applicant along with the application, is required to submit all prescribed documents such as, certified copy of the registration certificate; copies of national identity card (of individual), national tax certificate, passport and a notarized undertaking on prescribed format indemnifying the custom authorities against all liabilities. The applicant shall also submit a bank guarantee on prescribed format from a schedule bank (for an amount of Pakistani Rupees five hundred thousand or twenty-five percent of the value of suspected infringing goods whichever is higher for compensation of the losses likely to be suffered by the owner of imported goods due to false application and payment of various expenses during the process such charges incurred on account of investigating, demurrage, detention, warehousing, etc.).
Border measures and precautionary actions either before administrative entities or judicial courts.
Intellectual property owners can report their registered trademark or registered copyright as well as an exclusion order resulting from a finding of patent infringement issued by the ITC with U.S. Customs and Border Protection (CBP) that enforces intellectual property rights at all U.S. ports of entry. The CBP can exclude from entry, detain, and/or seize merchandise with counterfeit trademarks and gray market trademarked goods as well as pirated copies of copyrighted works.
Trade mark counterfeiting activities can be combated at the borders of the country through the seizure and detainment of counterfeit goods, which involves both the Registrar of Trade Marks and Malaysian Customs authorities, which is conducted upon application by the registered proprietor or his agent to the Registrar. Border measures do not apply to unregistered trade marks.
The enforcement bodies such as the police and the Ministry of Domestic Trade, Cooperative and Consumerism have been granted with wide enforcement powers. They have been granted with the power to enter any premises where there is reasonable cause to suspect that there are infringing goods or equipment for making such goods or equipment for making such goods, and to seize such goods or equipment with a warrant. Seizures can be effected without a warrant if there are reasonable grounds to believe that the infringing goods or equipment may be destroyed or removed from the premises due to a delay in obtaining a warrant. The Copyright (Amendment) Act 2012 has extended the right of the police to gain access to computerised or digitalised data when carrying out investigations.
Under Philippine customs rules and regulations, particularly Customs Administrative Order No. 6-2002, an intellectual property rights owner may request for the recordation of its intellectual property right with the Bureau of Customs (“BOC”) to enable the BOC to monitor and prevent the entry of counterfeit goods in the Philippines. This is in consonance with the IP Code provisions, which prohibits the entry into the Philippines of goods in violation of the IP Code, such as those bearing infringing marks or trade names, those containing false designation of origin, false description or false representation.
Particularly, under Customs Administrative Order No. 6-2002, the following are prohibited:
- Those which shall copy or simulate any mark or trade name registered with the IPO, without the authorization or consent of the registrant or its duly authorized agent.
- Those which shall copy or simulate any well-known mark as determined by competent authority, without the authorization or consent of the owner or its duly authorized agent.
- Those which are judicially determined to be unfairly competing with products bearing marks whether registered or not.
- Those which constitute as a piratical copy or likeness of any work, whether published or unpublished, on which a copyright subsists.
- Those which present themselves as a substantial simulation of any machine, article, product, or substance duly patented under the IP Code, without the authorization or consent of the patentee or its duly authorized agent.
- Those which use false or misleading description, symbol, or label that is likely to cause confusion, mistake, or deception as to the affiliation, connection, or association of the imported goods with another person's goods; or those which misrepresent their nature, characteristics, qualities, or geographic origin.
Recordation with the BOC allows the right-holder to apply for the suspension of release of the goods which infringe on his/her intellectual property rights.
Further, a right-holder that has not recorded his right with the BOC may, upon the submission of the same documents above, request the Commissioner of Customs or, for ports of entry outside the National Capital Region, the District Collector of Customs concerned to issue an alert or hold order against any importation suspected to contain infringing goods.
In order to record the IPR with the BOC, the IPR holder must submit an affidavit attesting that: a) the applicant is the rightful owner of the IPR sought to be recorded, or in case of a representative or an agent, that he is duly authorized by the IPR Holder/Owner to make the application; and b) that the person or other entities in the submitted list, if any, are so authorized or not so authorized to make the importation or distribution of such products covered by the IPR together with a sufficient description of the products covered by the IPR sought to be recorded, together with samples thereof.
In addition, the following documents which are meant to aid the BOC in identifying the IPR holder/owner and providing the BOC with minimum information that will help its officers in effectively monitoring and evaluating infringing goods at the border, must be submitted:
a. three (3) certified true copies of the Certificate of Registration issued by the IPO, if the IPR is registered with the IPO;
b. three (3) certified true copies of a decision or resolution of a court or other competent authority declaring or recognizing the claim to an IPR, if the IPR is not registered with the IPO;
c. For copyright and other related rights, an affidavit stating that (1) at the time specified therein, copyright subsists in the work or other subject matter, (2) he or the other person named therein is the owner of the copyright, and (3) the copy of the work or other subject matter annexed thereto is a true copy thereof.
Once recorded, the Bureau shall monitor and inspect on its own initiative suspect imports to determine whether or not they are liable to seizure and forfeiture pursuant to law.
The recordation of IPRs and product or products covered therein shall be valid for two (2) years from date of the recording and renewable every two years thereafter.
A recordation fee of Two Thousand Philippine Pesos (P2,000.00) [approximately Forty Four and 44/100 United States Dollars (US$44.44)] per product but in no case to exceed Twenty Thousand Philippine Pesos (P20,000.00) [approximately Four Hundred Forty Four and 44/100 United States Dollars (US$444.44)] per right-holder must be paid to the Bureau of Customs.
Identification Procedures: When Customs finds any goods suspected to infringe upon intellectual property rights, it initiates an “identification procedure” in which it makes a decision as to whether or not the suspected goods are infringing intellectual property rights. If Customs decides that the goods are infringing intellectual property rights based on opinions and evidence from the rights holder and the importer, it may confiscate and destroy the infringing goods.
Application for Suspension: The owners of intellectual property rights may request Customs to initiate identification procedures in the case where Customs detects goods suspected of infringing their intellectual property rights in imports or exports. In cases where the suspected goods are those which the intellectual property rights holder applied for suspension and Customs has accepted such application, simplified identification procedures may be available, except in cases of patents, utility model rights and design rights.
For more details about these procedures, please see the Japan Customs’ website: http://www.customs.go.jp/mizugiwa/chiteki/index_e.htm.
Custom recordal mechanisms for the recordal of registered trade marks are available in five of the seven emirates (Abu Dhabi, Ajman, Dubai, Ras al Khaimah and Sharjah). Separate recordals must be filed in each emirate; there is no central recordal system. The customs recordal lasts for the term of registration of the trade mark, so must be renewed on renewal of the registration in question.
For other IP rights, Customs will consider stopping suspect shipments on request from the rights holder with supporting intelligence, particularly where accompanied by a court order.
An administrative procedure which is conducted by the Mexican Patent and Trademark Office. It is called “border measures”. Its main purpose is to seize or interrupt the free circulation of infringing products at the border.
An application for recordal of a valid intellectual property right can be submitted electronically and a single application covers all ports in India. However, in case the client has any information which may assist authorities about any specific ports, it is advisable to provide them such information.
Documents to be submitted online:
- A scanned copy of the registration certificate or proof of title/ ownership of the intellectual property right.
- The serial number and details of the demand draft in favour of the Commissioner of Customs at the opted location
- A copy of Power of Attorney in favour of counsel / advocate / agent who is filing the Application, if applicable.
- A statement of exclusivity outlining the scope of the IP right sought to be recorded.
- Digital images of genuine goods (for trademarks, product patents and designs).
- Digital images of infringing goods (if applicable/ available).
- A statement on the differentiating features of genuine and infringing goods (not mandatory but advisable for trademarks, patents and designs).
- The IEC code of the right holder and/or other authorized importers (not mandatory but advisable).
An owner of an intellectual property right may file an application for action with the Customs Authority. If the Custom Service identifies products suspected of infringing an exclusive right, the custom service notifies the applicant who may then chose to take action against the importer of the infringing products.
Trade marks - To stop the import and/or export of infringing goods it is possible to file National/EU wide Customs Application for action.
Patents - Regulation (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 concerning customs enforcement of intellectual property rights is fully applicable. It is possible to file a Customs application for action with regard to a patent and seek the application of a simplified procedure under Article 23 thereof.
The border control of intellectual property in Vietnam basically and mainly covers registered trademarks, industrial designs, copyrighted products and geographical indications due to the limited capacity of the Vietnamese customs force. Pursuant to the Law on Customs of 2014, the hub for receiving IPR border control is the Customs Management Supervision Department, an affiliate of the General Department of Customs (GDoC) under the Ministry of Finance. The requests upon the formality acceptance by GDoC shall be convey its inferior networks of departments of or sub-departments of customs nationwide including the Anti-smuggling Investigation Department
There are two types of requests for IPR border control currently accepted by GDoC:
(a) request for application of inspection and supervision to detect IP infringement which is valid in a period of 2 years; and/or
(b) request for temporary suspension of customs clearance where imported or exported goods shows possible IP infringement
Under Circular 13/2015/TT-BTC of January 30, 2015, the procedure for request for temporary suspension of customs clearance can be briefed as follows:
(a) The customs shall notify right holder, who has been recorded his/her IP rights with GDoC, of the former’s finding any allegedly infringing goods and request right holder/authorised individual or organization to submit relevant documents including tittle of protection of IP rights, a detailed description of genuine goods and infringing goods, guide to recognition of the same and a guarantee certificate of credit institutions equal to 20% of the value of the goods shipment in the contract or at least VND 20 million if the value of the suspected infringing goods shipment is not identified to pay damage compensation and expenses as prescribed which may arise due to wrong request for postponement of customs formalities
(b) If the as-filed dossier is found legitimate, within 2 hours, the suspension-conducting customs shall issue its decision of provisional customs clearance that is valid in 10 working days (extendable for another 10 working days subject to a statement of justified reason along with another guarantee certificate)
(c) During the time of provisional suspension of customs clear, the suspension-conducting customs shall conduct the followings:
(i) To ask the right holder to provide relevant documents such as expert opinon, catalog, conclusion of similar case
(ii) To have IP infringement expert opinion (infringement appraisal) done regarding the determination of elements of infringement.
(iii) To extract, archive specimens of the suspected goods
(iv) To communicate or coordinate with other State IP bodies
(d) Upon the expiry of provisional suspension, the suspension conducting customs is liable for performing one of or all of the followings: to issue a decision on accepting the case in accordance with administrative penalty handling, to issue a decision on temporary seizure of IP infringement suspected goods, to prepare and handle infringer by administrative measure, or to release the suspected goods in case of no infringement
Customs procedures may either be based on the EU Product Piracy Regulation and/or national law.
As previously mentioned, the Intellectual Property Rights (Cross-Border Measures) Act deals with customs action in the event of the following:
- The entry into Malta,
- export or re-export,
- release for free circulation,
- temporary importation,
- placing in a free zone or free warehouse, of goods infringing an IPR.
Where goods which are alleged to infringe intellectual property rights are placed under one of the above scenarios, the holder of an IPR may lodge an application in writing with the Comptroller of Customs for action by the Customs authorities. It is also possible that in the course of checks made under a Customs procedure, Customs becomes aware that the goods are goods infringing an IPR. In this situation, Customs may take ex officio action and notify the right holder of the possible infringement. In the event of proceedings filed by the rights holder, Malta Customs may suspend release of the goods or detain them for a period of five working days, to enable the holder of the right to lodge an application for court action. An extension may be granted if so requested by the rightsholder, however no further extensions following this are allowed.
It is interesting to note that the Maltese courts have applied these proceedings even to goods in transit, with goods in transit being stopped and destroyed based on the courts’ interpretation of Maltese law which was stricter than the interpretation of EU law.