On 1 January 2014 a new Customs Regulation (EU) no 608/2013 enters into force and in replacement of current Regulation (EC) No 1383/2003. The purpose is to address the increase in counterfeit and pirated goods coming into the EU by strengthening the enforcement of intellectual property rights to the benefit of right holders, EU economy and consumers’ safety.
WHAT IS NEW
Regulation (EU) No 608/2013 will extend Customs intervention to other types of infringements such as topography of semi-conductor products, utility models and trade names. Further, the definition of counterfeit products is extended to include packaging, labels, stickers, brochures and similar items identical or confusingly similar with a registered trademark.
A new common application form (covering both national and European applications) will be introduced and more detailed information is requested about the applicant’s intellectual property rights and the genuine products is requested, including information to enable the Customs authorities to readily identify counterfeit goods.
The simplified procedure will become compulsory in all member states. The simplified procedure allows the destruction of goods without there being any obligation to initiate proceedings to establish whether an intellectual property right has been infringed. Further, the simplified procedure allows destruction with reference to implied consent provided that the importer has not notified his opposition to destruction of the goods within 10 working days. It remains; however, open how this will be implemented in certain member states, e.g. Sweden will continue to request the importers explicit consent to destruction.
Most significant change is the introduction of a small consignments procedure. A small consignment is defined as a “postal or express courier consignment that comprises three units or less or has a gross weight of less than 2 kg” and Customs will have the authority to destroy small consignments of counterfeit and pirated goods without explicit agreement of the applicant. However, Swedish Customs will initially not observe the principle of implied consent but continue to request explicit consent to destruction of the goods also from the importer of small consignments.
IMPLICATIONS FOR APPLICANTS
In order to be covered by the Small Consignment Procedure a new Customs Application must be filed and the procedure opted in.
Applications after the previous Regulation (EC) 1383/2003 cannot be extended after 1 January 2014. Thus, a new application in accordance with the new Regulation (EU) 608/2013 must be filed during 2014 in order to replace the existing application.
Danish and Swedish Customs have informed that the Small Consignment Procedure implies that we will not be notified about consignments comprising three units or less, or consignments which have a gross weight of less than 2 kg if the importer has not opposed to the destruction. Further, if the importer has not opposed to the destruction, we will not receive any information about the importer, nor will we receive samples or photos of the goods in question. Upon request, it is possible (probably on a six months basis) to obtain information about the actual or the estimated quantity of destroyed goods and their nature.
Hence, decision on whether to opt in for the small consignment procedure should be considered taking into consideration among other factors
whether you have:
- A minimum threshold strategy,
- Lightweight or heavy products,
and whether you require:
- Information about the infringer, photos of the products and/ or statistics over the seizures.
ZACCO CAN ASSIST YOU
Zacco has a team of highly specialised and experienced lawyers who are handling IPR infringements and Customs matters on a daily basis for large national and international clients and they are ready to assist you with more detailed information, clarification and strategic advice regarding the new EU Customs Regulation and will be pleased to assist in filing a Customs Application.
Stig H. Ekmann, Denmark: firstname.lastname@example.org (+45) 39 48 81 24
Maria Beijer, Sweden: email@example.com (+46) 40 69 054 19
Kristin Kjærheim Astrup, Norway: firstname.lastname@example.org (+47) 93 43 51 16
Nils Köster, Germany: email@example.com (+49) 421 386 470