IP, Technology & Data

IP owners do not always have to go to court to stop or resolve infringement disputes. Aside from a number of well known alternative dispute resolution processes there is another less known method which can achieve great and cost effective results.

Registering your IP with Customs

Under an EU Regulation of 2013 IP owners can register their IPRs via an Application for Action with relevant Customs in the EU state(s) in which the intellectual property rights (IPRs) apply. Most types of IPRs qualify, including unregistered rights such as copyright, design rights and passing off. This means that where Customs identify suspect infringing/counterfeit goods at the relevant border(s) they must seize and detain them.

As far as registered trademarks are concerned, even if the goods in question are ‘in transit’ and not destined for an EU Member State, they can  be seized in view of another recent EU Regulation. The latter will apply unless the ‘infringer’ can establish that the goods would not infringe IPRs in the ultimate destination country.

Options when goods are seized

Clearly, it assists to provide Customs with as much detail as possible about, for example, the ‘infringing’ goods, how to differentiate them from the real thing, and where they are likely to come from and be going to etc.

If suspect goods are seized the IP owner will have 10 working days (possibly extendable) to inspect these and decide if they infringe. If they do, they may consent to their destruction. The “infringer” will also however be given 10 days to consent or object to this.

Only if they try to object in the 10 day timeframe will court proceedings be needed to decide if there has been an infringement or not. Where the goods identified are in small quantities (less than 2 kg or 3 units or less) if the Application has authorised it, Customs may destroy them without any consent from the IPR owner – provided the ‘Infringer’ does not object. This can lead to savings of time and cost.

These Applications last for a year and can be renewed at that stage.

As these procedures are based on an EU Regulation, absent any successful negotiation to maintain the UK’s participation post Brexit, they will cease to apply to the UK Customs/UK IPRs. However, it will still be open to UK IP based owners to use them so far as the rest of the EU is concerned.

IP owners should seriously consider use of this cost effective and efficient weapon where they are concerned about infringing  or counterfeit imports coming into the EU from elsewhere.

Gill Grassie

Partner at Brodies LLP
Gill is a Partner in Brodies IP and IT dispute resolution team. Her work covers the whole gamut of contentious IP, IT and technology and a wide variety of sectors as disparate as luxury brands, oil & gas and renewables, pharmaceuticals and financial services.
Gill Grassie