A new approach to customs enforcement
The regulation of the European Parliament and of the Council no. 608/2013/EU governing anti-counterfeiting action by customs authorities was published on June 29, 2013, repealing Regulation 1383/2003/EC.
This new regulation, which will apply from January 1, 2014, strengthens the role of customs authorities in the interception and the destruction of counterfeit goods entering, or in transit through, EU territory.
Like the prior rule, Regulation 608/2013 deals only with the procedural rules for customs authorities and contains no rules relating to criteria for ascertaining the existence of an infringement of an IP right (recital 10).
Its scope is enlarged and will henceforth include trade names when they are protected under national law, and topographies of semiconductor products as well as utility models and devices which are primarily designed, produced or adapted for the purpose of enabling or facilitating the circumvention of technical measures (Article 2).
Its scope also includes the monitoring of small consignments, due to the growing number of counterfeit goods sent by postal service (Article 26).
"Regulation 608/2013 deals only with the procedural rules for customs authorities and contains no rules relating to criteria for ascerting the existence of an infringement of an IP right."
However, as announced during the debate on the review of Regulation 1383/2003/EC, non-commercial goods carried by passengers in their personal luggage are not targeted. The exclusion also applies to goods that are manufactured by a person who is duly authorised by a right holder but are produced in surplus quantity.
With the new regulation and under certain conditions the seized goods may be destroyed under the control of the customs authorities “without there being any need to determine whether an IP right has been infringed under the law of the member state where the goods are found”. When the requirements specified by the text are fulfilled, destruction may be implemented without the intervention of a judge (Article 23).
This so-called ‘simplified’ procedure is no longer optional and enables the applicable regime to be unified for all member states of the EU.
Furthermore, the new regulation specifies expressly the factors which must accompany the application for customs intervention to be submitted to the customs authorities. In this respect, the regulation henceforth requires the applicant to communicate specific technical data on the authentic goods (barcodes, images, etc), as well as information relevant to the customs authorities’ analysis and assessment of the risk of infringement of the IP right concerned (authorised distributors, etc).
Finally, contrary to what was expected during the inaugural conference of the exhibition Contrefaçon, sans façon held on the January 29, 2013, the new regulation does not modify the solution set out by the Nokia-Philips case law relating to counterfeit goods in transit coming from third party countries into the EU and intended for another third party country.
In this decision, the Court of Justice had decided that goods, prima facie not intended for introduction into EU territory, could nevertheless be seized by the customs authorities, if they had convincing evidence or strong clues suggestive of marketing of goods in the EU, which are very difficult to provide.
The issue of goods in transit will be regulated by forthcoming texts modifying Regulation 207/2009 on the Community trademark and Directive 2008/95 on trademarks, which will soon be debated before the European parliament.
The French customs authorities, who have ceased to intervene against allegedly infringing goods in transit or in transshipment, will thus have to await the adoption of these forthcoming texts.
