EC Regulation no 1383/2003 is a means for right holders to prevent the importation or export of goods suspected of infringing certain intellectual property rights.
However, in order to benefit under this procedure, it is necessary for the right holder first to file an application for action with the appropriate Customs authorities. The application for action remains in force for one year and can be renewed at the right-holder’s request indefinitely, provided, of course, the intellectual property right remains in force.
Whenever customs detain goods, which they suspect to be counterfeits, they immediately contact the right-holder or its representative and then send him an official notification. The goods are then detained for a period of 10 working days, which can be extended for a further 10 working day period (a non-extendable period of three working days in the case of perishable goods).
This period is intended to allow the right-holders to inspect the goods and confirm whether or not there are counterfeits.
If the right-holder indicates that the goods are genuine or does not confirm within the 10 day period that the goods are counterfeit, they are immediately released.
However, if the goods are counterfeits, the right holder must, in principle, either file an application before the competent court for precautionary measures or bring legal action before the civil or criminal courts, within the ten day period failing which the goods will be released.
According to the provisions of EC Regulation no 1383/2003, the Member States have the possibility to put into place a simplified procedure for obtaining the destruction of counterfeit goods, without having to bring legal action or to apply for precautionary measures.
The procedure enables customs authorities to destroy the disputed goods without it being necessary to establish under the national law that there has been an infringement of the intellectual property rights concerned.
This procedure is only applicable if certain conditions have been fulfilled.
The right-holder must seek the written agreement from the declarant, the holder or the owner of the goods to the destruction of the disputed goods. Such agreement will be presumed if the declarant/holder has not expressly opposed the destruction within the allowed time period. The goods are destroyed at the right-holder’s expense. Prior to such destruction a sample of the goods are taken which can be used as evidence in case of any subsequent legal proceedings.
If the declarant or holder opposes the destruction, the right-holder has the possibility file an application before the competent court for precautionary measures or bring legal action before the civil or criminal courts.
Currently, this simplified procedure has not been implemented in France. Indeed, once the right-holder has confirmed the goods are counterfeit and if it does not wish to bring legal proceedings, French customs are entitled under their customs powers to seize and destroy the goods. However, during a working group of French Customs held on 09 July 2010, the latter indicated that they would be favourable to the introduction of such a simplified procedure, provided that a more secure legal framework is put in place.
The advantage of introducing a simplified procedure into French law is that it should enable right-holders to obtain the identity of the holder or declarant from Customs, which is not possible currently, unless the right-holder undertakes to bring legal action. We hope, however, that the introduction of a simplified procedure in France will not call into question the French Customs’ current practice of seizing and destroying goods, a simple and cost-efficient way for right-holders to make sure that counterfeit goods are not put on the market.
Customs border detention orders can be a very efficient tool in the fight against counterfeiting, provided that they are used properly.
Dreyfus & associés would be delighted to assist you in putting in place a Customs border detention order to help protect your IP rights.