New EU Customs Enforcement Regulation: Implementation Update

On January 1, 2014, the new Regulation (EU) No. 608/2013 of the European Parliament and of the Council of June 12, 2013, concerning Customs enforcement of intellectual property rights and repealing Council Regulations (EC) No. 1383/2003, and the new Commission Implementing Regulation (EU) No. 1352/2013 of December 4, 2013, establishing the forms provided for in Regulation (EU) No. 608/2013 of the European Parliament and of the Council concerning customs enforcement of intellectual property rights, came into force on the territory of the EU.

In accordance with the transitional provisions of the Regulation (EU) No. 608/2013, all customs watch applications approved under the repealed Council Regulation (EC) No. 1383/2003 may no longer be extended, but must be filed anew.

With the introduction of the Regulation (EU) No. 608/2013, significant amendments have been made in terms of preparing and filing of the new national or community customs watch applications, and also in terms of customs proceedings for the detention of goods suspected of infringing IP rights.

Firstly, the new EU Customs Regulation expanded the scope of protection of rights to also include trade names, topographies of semiconductor products and utility models.

Another novelty is that the Declaration by which the right holder accepts liability under the conditions laid down in Article 28 of the Regulation (EU) 608/2013 and accepts to bear the costs as referred to in Article 29 of Regulation (EU) 608/2013, is now incorporated in the application form and does not need to be signed separately as under the old EU Council Regulation (EC) No. 1383/2003.

In addition, the so-called simplified customs procedure, according to which counterfeit goods may be destroyed with the implied or expressed consent of the holder of the goods, is now more strict and obligatory. Namely, the destruction request must be filed within the 10 working day period only, except in cases of perishable goods. The deadline is calculated from the date of the receipt of the suspension notification – Article 23 of Regulation (EU) No. 608/2013. The extension of the deadline is now possible only when the consent to the destruction is not given and the procedure to determine the infringement must be initiated before the competent authority. To avoid the overlapping of deadlines, the Customs will now notify the IP right holder about the detention only after the holder of the infringing goods is notified and his 10 working day period for the consent to the destruction had already started.

An important novelty is the introduction of the “small consignments procedure”, regulated by Article 26 of Regulation (EU) No 608/2013. Small consignments are defined as postal or express courier consignments that contain three units or less or that weigh less than two kilograms. The goods detained under this procedure may be destroyed without the customs office notifying the right holder, if the right holder requested this procedure in the customs watch application. However, upon destruction, the right holder must cover the destruction costs.

Article 6(3) of the Regulation (EU) No 608/2013 and Commission Implementing Regulation (EU) No. 1352/2013, obligates the right holders to include a more detailed description of genuine goods (points 12-16 of the prescribed application form). The right holders now have to include the description and the value of all genuine goods, their distinctive features, the Combined Nomenclature (CN) tariff numbers, places of production, involved companies, and authorized traders. This novelty has caused considerable trouble for IP right holders because they now need to gather a great amount of information, some of which they even consider sensitive and are reluctant to disclose it. The initial implementation phase showed different approaches by the national customs authorities in various countries, ranging from a very strict application of the provisions to a very flexible interpretation, where only some of the requested information needs to be included in customs watch applications. It remains to be seen how, given the initial problems the IP rights holders are facing, this provision will be interpreted and applied in practice throughout the EU.

According to the information obtained from the EU countries where PETOŠEVIĆ has offices, (Bulgaria, Croatia, Hungary, Romania and Slovenia), the simplified procedure and the small consignments procedure will be fully applied as stipulated by the EU Regulation No. 608/2013. All customs offices in the mentioned countries also confirmed that the detailed description of genuine goods, as requested by Article 6(3)(g)(h)(i) of the Regulation (EU) No. 608/2013, must be included in the application form, i.e. the fields 12-16 of the prescribed application form may not be left empty. So far, the Slovenian and Bulgarian customs offices confirmed that although the fields may not be left empty, the application for action would be accepted even when the information on genuine goods is limited to only several kinds of goods, as examples. It remains to be seen how the other offices will apply this provision, but in any case a sharp decrease in new customs watch applications has been noticed in all of the above-mentioned countries, which shows that this part of the Regulation is indeed very problematic for the right holders.

In cases of ex officio detentions, where the right holder needs to fill out the application for customs action within four working days after being notified of the detention, the right holder may also file a national customs application, which does not ask for such a detailed description of the genuine goods as requested by Article 6(3)(g)(h)(i) of the Regulation No. 608/2013. However, such application will only apply to a particular detention and will not stay in force for 12 months, unless the right holder provides the requested information within 10 working days from the receipt of the detention notification.

Finally, the EU national customs authorities are now using the new centralized automated customs database — COPIS. The COPIS system enables national customs authorities to process all customs watch applications and cases directly through this system where all relevant documents and details related to customs watch applications are stored.

By: Andrej Bukovnik, Csilla Balogh, Jadranka Barisic

For more information, please contact Andrej Bukovnik.