Taking action against counterfeit goods in EU
Enforcement of Intellectual property rights through customs
Owners of Intellectual Property Rights (IPR) face the problem of damages caused by the import and sale of counterfeit goods that infringe trademarks, patents and designs. It is estimated that just for the sector of clothing, footwear and accessories counterfeiting causes annually damages of more than 40 billion EUR of lost of sales to the EU economy.
In many cases - despite of an obvious infringement - a direct enforcement against the producer himself might not be possible or effective due to high costs or aspects of jurisdiction. Therefore, an important tool to ensure the effective protection of intellectual property is the application for border seizure. It is a relatively simple and cheap possibility for IPR owners to stop infringing goods from entering or leaving a country by enforcement of the national customs authorities. In 2013 customs in European Union seized over 36 Million products that were suspected to infringe IPR regarding goods worth 760 Million EUR.
How to apply?
Within the EU there are diverse possibilities to stop counterfeit goods at the borders according to the different laws of the member states as well as EU directives. There are different forms and jurisdictions depending if it is a national application to a member state or a general application for the whole EU market. To protect IPR in Latvia, Lithuania and Estonia an application could be made for one or several states or for the entire EU which depends on the individual case (for example between which states the goods are shipped). For some member states the application is submitted via an online system, although not all member states have declared that mandatory or even made it possible so far.
The applicant has to submit a certificate (or other documents) regarding the ownership of the IPR. In addition, customs should be given as much information as possible regarding a concrete infringement to enhance the chances of a successful course of action. Such information includes for example the name of the infringer and special features of the goods that make it visible as being counterfeit. A constant communication with the authorities before and during the procedure raises the chances of finding as many counterfeit goods as possible.
What will be the procedure and possible outcome?
The application is valid for one year but can be extended without any limitations. Infringing goods imported or exported will be seized and eventually destroyed. After seizure, the owner of the goods will be informed and has a right to object. The costs for storing and destruction will have to be beared by the applicant who can later take recourse to the infringer. Nevertheless, there might be the necessity of a security deposit by the applicant as well as the risk of damage claims by the goods owner in case a court later finds that these goods didn’t infringe the applicants’ rights at all.