New product piracy regulation in place
On 1 January 2014, the new Product Piracy Regulation (EU) 608/2013 ("PPR 2014") entered into force. This Regulation is now the legal basis allowing customs authorities within the entire EU to stop goods potentially infringing intellectual property rights from being imported into the EU.
The procedure under which such goods can be detained and ultimately destroyed has now been widely harmonized across the EU Member States. These are the most important facts:
Broader Scope of IP rights covered
PPR 2014 covers inter alia trademarks, copyright protected works, patents and -- in addition to the rights already covered under the previous regime -- also trade names and utility models.
Right holders' call for action
In order to ensure that customs authorities correctly identify and detain counterfeits, right holders are required to file a detention request (which should include information on genuine and infringing goods, distribution channels, etc.) that is generally valid for one year. Such requests could be filed on a national level (only covering the territory of the respective EU Member state) or on an EU-wide level (if based on EU-wide registrations such as Community Trademarks or Community Designs).
Simplified destruction procedure
The procedure within which goods may be destroyed without there being any need to formally determine whether an intellectual property right has indeed been infringed under the law of the Member State where the goods are detained had already been applied by Austrian customs in the past. This "simplified" procedure is now mandatory for EU customs authorities in all EU Member States.
Therefore, right holders applying for customs action covering their rights need to set up a strategy on how to deal with customs seizures in each Member State. Since right holders are now obliged to confirm towards customs (based on the information received from the customs authorities) that the detained goods are indeed counterfeit and shall be destroyed, a work-flow for the involved examination and confirmation steps needs to be worked out and implemented in order to ensure the efficient handling also of smaller shipments.
Specific procedure for small detentions
Further, PPR 2014 allows right holders to opt-in into a specific procedure for "small consignments." Under this procedure, very small shipments (consisting of less than 3 pieces or 2 kg) may be destroyed by customs automatically and thus even without the right holder's involvement. However, the prerequisite for this is that the sender, the addressee or the consignment agent does not oppose such seizure.
Mandatory follow-up at court
Another new aspect of PPR 2014 is that in case the seizure is opposed, right holders are required to take action, i.e. initiate court proceedings to determine whether the seized goods are indeed counterfeit. In case the right holder does not comply with this requirement, customs authorities can put the request for action on hold.
Hence, right holders should consider whether any changes in their customs detention strategy against counterfeits are required due to the implementation of PPR 2014. If no request for customs action is currently in place, right holders might now consider picking up this opportunity to protect their IP, since the harmonization of the "simplified" procedure across Europe may make handling a pan-European customs detention strategy easier now.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.