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New EU legislation entered into force in January 2014 that outlines procedures Customs in the EU are expected to take in relation to suspected and confirmed infringing goods. It also details the requirements for IP rights holders when filing an Application for Action (AFA) (discussed below).
The new legislation improves the position of IP rights holders when tackling infringing goods and addresses the increase of very small shipments of goods being bought online.
An Application for Action (AFA) puts your IP rights on record directly with Customs offices in the EU Member States. It acts as an instruction that Customs detain shipments of goods entering or leaving the European Union where there is a reasonable suspicion on the part of Customs that the goods infringe your Intellectual Property (IP) rights.
It is possible to cover a wide variety of IP rights in an AFA, including but not limited to patents, trade mark registrations and design registrations.
When goods are detained, IP rights holders have 10 working days (extendible by another 10 working days in certain circumstances) to assess whether the goods do infringe an IP right and if so give consent for destruction, or other type of abandonment, of the goods. In the case of perishable goods, the period of detention is restricted to 3 working days.
Customs will also notify the Declarant or Holder of the goods, being the party declaring the goods for import or export or the party the goods are being sent to. The Declarant or Holder has 10 working days in which to consent or object to the destruction of the goods. Unless the Declarant or Holder explicitly objects to destruction of the goods, the goods will be destroyed provided the IP rights holder has consented to destruction. Customs do not require explicit agreement of the Declarant or Holder to destroy the goods; absence of a response from the Declarant or Holder within the required time is deemed implied consent.
If the Declarant or Holder explicitly objects to destruction of the goods, the IP rights holder will need to bring court proceedings to determine that there has been an infringement and obtain destruction of the goods.
Where Customs seize goods for which there is no AFA covering the respective IP right, Customs has just one working day to identify a likely IP rights holder otherwise the goods are released to the Declarant or Holder. If an IP rights holder is identified and wants to try to have those goods destroyed, it has four working days to submit an ‘ex officio’ AFA, before Customs have to release the goods. An ex officio AFA only covers that one particular seizure.
Not only are the deadlines therefore tighter for both the IP rights holder and Customs offices where there is no AFA in place, it is time consuming and incurs unnecessary cost to put together and file individual ex officio applications each time you want to prevent infringing goods being released.
A granted AFA also provides a higher level of certainty that infringing goods will actually be detected by Customs. In our experience it is better to be actively aware of the extent and type of infringing products coming into and exiting the EU.
As well as details of the IP rights to be covered by an AFA, we need as much of the following information as possible: