CUSTOMS PROTECTION ON TRADEMARKS AND PATENTS
Customs agencies carry out an important activity against counterfeiting in order to monitor the goods placed in a particular territory and to block those suspected of counterfeiting trademarks, designs, patents and other property rights of third parties.
The protection of intellectual property by customs authorities is regulated by Regulation (EU) n. 608/2013 of the European Parliament and of the Council of 12 June 2013, concerning the protection of intellectual property rights by customs authorities repealing Regulation (EC) n. 1383/2003, GUUE L 181 of 29.06.2013; this regulation specifies the ways in which the holder of a trademark right, patent, model, design, copyright can request the customs authorities at national level and in the EU to monitor their products for a period of 12 months, going to block incoming goods of third parties deemed to be in breach of their property rights. The holder of an intellectual property right applied in one or more member states of the European Union, can require the intervention of the customs authority.
The national instance can be presented on the basis of an industrial property title registered at national level or having validity in the State of interest; the above mentioned application is then directed to the customs authority of the individual State and an administrative contact must be appointed locally, to which the customs authorities can forward the information relating to blocks of counterfeit goods. The EU instance, on the other hand, can be based on qualifications valid in the European Union and can be directed to all customs authorities of all EU Member States or some of them; in this case it may also be sufficient to appoint a single administrative contact.
To start the procedure for checking your protected assets, it is necessary to submit the relevant application to the Customs Agency, together with a copy of the relevant registration certificates, and a Declaration of Responsibility. The request for intervention must contain proof of the ownership and validity of the right in the European Union or in the territory of the state where the customs application is submitted.; specifically, the information useful for protecting pirated goods from the originals is:
- a detailed description of the original goods
- the name and address of the operator designated by the right holder
- a list of authorized producers / distributors / licensees
- the country or geographical area of possible origin of the counterfeit goods
- the probable recipients of counterfeit goods and information on the methods of fraud.
In case of blocking of suspicious products, the customs authority informs the owner or the administrative contact indicated in the request, forwarding images and information on the blocked goods and granting a term of ten days (three for perishable goods) to confirm if the goods are original or counterfeit; within this period the right holder must initiate legal proceedings to obtain the seizure of counterfeit goods. By the law Italian, the infringement of intellectual property rights constitutes a crime; consequently the Italian customs office, received a written communication in which the holder confirms the existence of the violation, it communicates the crime report to the Public Prosecutor who automatically initiates a criminal proceeding. In the event that the goods were actually counterfeit, the customs agency will confiscate and automatically initiate a criminal proceeding.
The holder of the counterfeit intellectual property title has the right to be informed about the origin and destination of the goods so as to prosecute an action against the final recipient.
The request for intervention by the customs authority has a duration of one year, and may be subject to renewal. Even when no request for intervention has been submitted, if the customs authority has valid reasons to suspect that goods infringe an intellectual property right, it can carry out an official intervention in the absence of a request, inviting the right holder to provide the necessary informations confirming the suspicion.
FOCUS: THE CONSEQUENCES OF BREXIT ON THE PROTECTION OF INTELLECTUAL PROPERTY IN CUSTOMS
What are the effects of Brexit on this argument? In this regard, the European Commission has published some documents concerning the consequences of Brexit on European Union trademarks, Community designs and models, and customs procedures for the protection of intellectual property rights. The published documents include:
“Withdrawal of the United Kingdom and EU rules for Trademarks and Community Designs Pursuant to (EU) 2017/1001 on the European Union Trademark and Regulation (EC) No 6/2002 on Community Designs” (republished 22 January 2018): in this document it is announced that the European trademarks registered or in state of demand, and the Community designs and models registered or pending before 30 March 2019 will continue to be valid in the Member States, but will no longer have effect in the United Kingdom.
“Withdrawal of the United Kingdom and EU Rules in the field of Customs Enforcement of Intellectual Property Rights” (June 4, 2018): in this document the European Commission warns that, starting from 30 March 2019, the EU rules on the protection of intellectual property rights by customs authorities will no longer apply to the United Kingdom.
Also in Italy, the “Updates to the Table of Business Associations and Dealers June 22, 2018” of the Directorate General for the Fight against Counterfeiting (UIBM) underlined that “A note of June 4 of DG Taxud (Taxation and Customs Union) of the European Commission draws the attention of the holders of intellectual property rights regarding the consequences of Brexit on the customs rules governing IP rights; from March 30, 2019, the United Kingdom will become a third country and all EU legislation will have no effect on British territory. Regulation (EU) No. 608/2013 concerning the enforcement of IP rights by customs authorities will no longer be applicable to the United Kingdom. The note from DG Taxud in particular draws attention to the Union questions with which the customs authorities of one or more Member States are asked to intervene in their territories to ascertain the violation of IP rights“.
In the light of the above mentioned, it is clear that the effects on the United Kingdom will be the following: Union applications can no longer be presented to the United Kingdom customs service; as regards the decisions granting Union applications, starting from the date of Brexit, the decisions of the United Kingdom customs services issued when the United Kingdom was still a Member State will no longer be valid in the remaining Member States; the acceptance decisions taken in one of the remaining Member States will remain valid in the EU-27 even though the British customs authorities were among the customs authorities called upon to intervene.