In this article, we provide an update on filing a UK AFA and how this decision should be considered in your IP Strategy. Shipments of goods entering and leaving the UK are regularly checked by the UK customs authorities for possible counterfeits. If the authorities believe they have identified a counterfeit that infringes an intellectual property right (e.g. a trade mark, design, copyright, patent) they will contact the IP rights holder to invite them to check the authenticity of the goods. If the IP rights holder confirms that the goods are counterfeit they are entitled to request that the goods be destroyed and/or take other legal action against the parties involved.
Holders of intellectual property rights in the UK are also entitled to record details of their IP rights with the UK customs authorities, to ensure the authorities are familiar with their rights and better equipped to identify possible counterfeits. The mechanism by which rights are recorded is known as an “Application for Action” or “AFA”.
These arrangements have been in place for many years and originally stemmed from EU border legislation. However, after the UK left the EU on 1 January 2021, the UK was required to implement new legislation and procedures to ensure this work could continue.
Previously, if IP rights holders wished to record their rights with the UK customs authorities, they could file either a UK AFA or an EU AFA. The former would have effect in the UK only, and the latter in the UK plus the remaining 27 EU member states (the “EU27”).
However, when Brexit took effect on 1 January 2021, EU AFAs filed with the customs authorities of the EU27 ceased to have effect in the UK. EU AFAs originally filed with the UK customs authorities have also recently lost their effect in the UK. Therefore, UK AFAs need to be filed for continued customs coverage in the UK.
In the run-up to Brexit, the UK implemented a new procedure for filing UK AFAs. Previously, the application form could be obtained from the European Commission and emailed or posted to the UK customs authorities. However, the form must now be filed online, with IP rights holders or their representatives first required to be registered with the UK’s tax, payments and customs authority, HMRC.
Once applicants have overcome the possible hurdle of HMRC registration, the form is quite similar to the European Commission’s form. Applicants are invited to provide information such as the IP rights they hold, how those rights are used on genuine goods, where genuine goods are manufactured, distinctive features of genuine goods, and anything else they believe will help the authorities intercept counterfeits.
Once a UK AFA is in place, if the authorities encounter suspected counterfeit goods they will follow the same basic procedure as before, i.e.:
At the time of writing we have already received notifications for several hundreds of counterfeit goods, resulting from UK AFAs filed under the new system, and we have arranged for these to be destroyed. The equivalent value of genuine goods would be in the tens of thousands.
We would strongly recommend that rights holders consider putting UK AFAs in place if they are concerned about counterfeiting in the UK. They are a simple and effective tool to get counterfeit goods off the market quickly and gather useful intelligence on exporters and importers of such goods.
If you are interested in filing a UK AFA please contact the Trade Mark team at AA Thornton.