Enforcements of famous trademarks by customs
The Balkan region consists of eight jurisdictions: Albania, Bosnia and Herzegovina, Croatia, Kosovo, Macedonia, Montenegro, Serbia and Slovenia. According to Europol reports, due to its geographic location, the region is an important hub for entry into the EU of counterfeit goods and other illicit items coming from China and Turkey. Each of these jurisdictions has long since introduced border protections for trademarks.
In order to take advantage of the available border protection measures, trademark proprietors must lodge a Customs Application with the customs authorities. Once this is done, border protection measures will be applied for the specific trademarks covered by the Customs Application and to the products covered by those trademarks. This approach is in line with the principle of trademark specialty.
The simplified procedure
The main goal of border protection is to ensure the destruction of counterfeits in a timely and cost-effective manner. This is achieved through a ‘simplified procedure’, in which the consent of the importer/declarant/owner of the detained goods to their destruction is presumed unless they explicitly object. If such an objection is made, the holder must oppose the customs seizure through court proceedings.
Lack of a corresponding trademark
The situation may arise where customs informs a trademark holder of the ex officio detention of products which do not correspond to the border protection the holder enjoys. At the moment of detention, customs officials may not know whether the holder has a trademark corresponding to the products being detained, or whether the mark is in force. The question then arises whether the holder may prosecute such a seizure through regular customs seizure proceedings.
A practical example
We received notification of a seizure made on an ex officio basis. The detained goods were sweatshirts labelled with the mark of one of the major social networks. A Customs Application had previously been lodged and granted for its two trademarks. However, neither of these marks was registered for the goods being detained. The issue then arose of how to prosecute the seizure without there being a trademark covering the detained goods.
The outcome of the customs proceedings was that the goods in question were released on to the market, without giving any opportunity to the holder to commence court proceedings against the importer on the basis of its trademarks’ reputation. Had the holder been able to commence court proceedings, the goods would have been detained until the proceedings had ended.
"A register of famous marks would improve not only customs seizure proceedings in cases where such marks are involved, but would also improve the trademark system in general."
According to the relevant trademark law, reputed trademarks should enjoy the widest scope of trademark protection, regardless of the goods or services for which they are registered. However, despite this intention to provide effective protection for famous trademarks, it appears that the holders of such marks are, in fact, not well protected by the customs authorities.
There are several options for improving the protection available to trademark holders in such situations. However, there are three in particular which would seem to be most efficient. The main question is: what powers should the holder of a famous trademark have, once notified of a customs seizure?
Potential solutions
The customs authority should continue to detain goods on suspicion of trademark infringement, regardless of whether the holder has a trademark corresponding to those particular goods being detained. This should not be difficult for customs officers in the case of famous trademarks. It should be expected that customs officers will be suspicious when they find marks they are personally acquainted with as having a high reputation fixed to products on which they do not usually appear.
For instance, customs officers would be well acquainted with the fashion articles on which a famous fashion label normally appears, but their suspicion would be aroused if they encountered the same mark fixed to a mobile phone.
Once the holder has been notified of the seizure in the normal manner, at least one of the options below should be available to prevent the release of the products onto the market:
