As we know, registering a trademark is crucial to protecting a brand in a particular territory. But, trademark registration is only the beginning. It is a constant task for all businesses to develop and protect their branding and reputation. Proactive measures should be taken to counteract any activities that can hurt their brands.
Holders of registered trademarks have a number of tools at their disposal in the fight against infringers. In this article, we will take a closer look at one of them – customs control.
Trademarks valid in Bulgaria (national Bulgarian TMs, EUTMs, or corresponding international designations), as well as other IP rights (patents, designs, utility models) give their owner the right to demand of the Bulgarian customs authorities to monitor the borders for counterfeit goods. When such goods are identified at the border – if they are being imported into the territory, exported to somewhere else, or passing through in transit, the goods can be arrested and destroyed.
This can be extremely useful - the customs authorities assist the legitimate private sector in counteracting infringing activities and this protects legitimate business, market share and reputation. The counterfeit products are arrested before they can cross the border, thus they can't reach the consumer and cause damage to the brand. At the same time, the customs authorities will inform the trademark holder of the identity of the importer and seller, which allows for further investigations and monitoring to be carried out on these parties, with a view to preventing other infringements and, if necessary, filing lawsuits and taking other measures.
To take advantage of customs control, an application must be submitted to the Bulgarian Customs agency, containing information about the registered trademark or other IP right, as well as other information that can assist the customs authorities in the carrying out of their duties. This application can be for Bulgaria only, or, when the trademark in question is an EUTM or international designation for the EU, for multiple EU-Member states. In the latter case, all documentation will need to be in English and possibly also the language of the relevant EU Member State, and the applicant will also need to provide an address for correspondence in each state. The application can be approved for a period of up to one year, after which it will need to be renewed. The applicant and its representatives also need to have an EORI number in order to communicate with the customs authorities.
Following approval, customs authorities will monitor for infringing goods and arrest goods suspected of infringing IP rights. In the course of the customs procedure, the trademark/other IP right owner will be notified and will be able to request for the goods to be destroyed.
It is important to act quickly, as deadlines in this process are quite short. There is a deadline of only 10 working days (or 3 working days, when the arrested goods are perishable goods) to make the request for destruction. Otherwise, the goods will be released. If the importer consents to the destruction (essentially admitting that the goods are infringing goods), the goods will be destroyed.
If the importer opposes the request for destruction, court proceedings will need to be initiated to ascertain that there is indeed an infringement. If the court action is successful, the goods will be destroyed. If not, the goods will be released. These proceedings can sometimes take an extended amount of time (more than one year) to come to a conclusion, which is something that should be kept in mind.
It should also be kept in mind that the customs' costs in relation to the holding, storage and destruction of goods are borne by the trademark holder. In turn, the trademark holder may look to recover such expenses from the importer in separate proceedings. In Bulgaria, these costs tend to be affordable, especially when compared with western European jurisdictions.
In order to most effectively navigate the procedure at the customs stage and in court, it's best to use a professional representative, who can communicate with the authorities in the local language, ensure that no deadlines are missed and advise and execute on the appropriate steps to safeguard the trademark owner's interest.
The arrest and destruction of goods at the border can be an individual measure. However, it is most effective when used as part of a complex trademark and IP enforcement strategy in combination with other actions, such as robust monitoring, administrative proceedings before the Patent Office and infringement lawsuits. Everything depends on the circumstances and the desired approach.
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.