What means do Customs officers have at their disposal to prove that articles are counterfeit?
Two types of seizures are permissible by law, one being preventative, the other prohibitive.
As a preventative measure, Customs authorities protect firms that have filed an interception request. This allows Customs officers to hold any suspicious goods for a period of ten days, limited to three days in the case of perishable goods.
As a prohibitive measure, Customs authorities implement a process of seizure where counterfeit is proven and thereby ensure the immediate withdrawal of counterfeit goods from sales channels, whilst at the same time taking the offenders to court.
PREVENTION: Customs retention
Intellectual property rights holders must file an interception request in order to activate a Customs watch which keeps them informed about the importation into France of allegedly counterfeit products.
The request is made by simply providing the certificate of registration for a trademark, model or patent delivered by the National Institute for Intellectual Property (INPI) or other registration office. This measure is preventative and can be done before any cases of counterfeit are confirmed.
The request form asks for certain information that ensures that Customs controls are effective:
- The intellectual property title deed
- Whom to contact (technical and administrative staff)
- A technical description of the genuine goods, production lines and transport itineraries
- A description of the illegal copy if the counterfeit goods are already in circulation
The interception request is valid for one year from the date the dossier is approved by the administration. The cover can be renewed by written request. All information provided is confidential and may not be disclosed by Customs!
The advantages of the Customs retention process:
- The information gathered enables Customs checks to be better targeted and therefore more effective.
- The interception request is a prerequisite before any suspicious goods can be held for 10 days.
This procedure is carried out in close collaboration with rights holders
In order to file an interception request, the rights holder (or their representative) must comply with the following two conditions:
- The holder must provide a very detailed description of the goods in order to help Customs officers spot possible counterfeit items.
- This must be accompanied by relevant proof confirming that the request comes from appropriate rights holder.
In order to facilitate Customs checks and make them more effective, specific Customs training may be necessary. The rights holder has the possibility of training Customs officers in order to help authenticate goods examined by interception request.
PROHIBITION: Customs seizure
The intellectual property rights holder or their exclusive licensee must make a formal request to the president of the ‘Tribunal de Grande Instance’ (TGI or High Court) since seizure of counterfeit items comes under their jurisdiction. This seizure can be real or descriptive. In order to validate the seizure, the applicant must assign either as a civil entity before the TGI or directly before the Criminal Court within 15 days.
The lawsuit for counterfeit brought before the competent TGI authorities follows the rules laid down by common law and the case is to be heard within 3 years of the date of infringement. The case is usually brought by the rights holder, but their exclusive licensee can act in place of the holder if the latter, having been invited to proceed, declines to do so, unless the licensing agreement specifies otherwise.
When filing a lawsuit for counterfeit, the IP rights holder must prove that the act or acts of counterfeiting have occurred in accordance with the general principle of article 9 of the Civil Code according to which “it is the responsibility of each party to prove, in accordance with Law, the necessary facts in support of their claim.” Counterfeiting may be proven by all lawful means, but infringement seizure is the method most frequently used by rights holders.
In its final decision, the Court can ban the production of all counterfeit items, order the confiscation of goods bearing the counterfeit brand and award damages to the trademark holder in order to compensate all losses due to counterfeit.
This type of case is to be filed under the same conditions as with a civil case, in other words either by the trademark holder, or by his exclusive licensee. The public lawsuit is to be filed either by The Crown or by the victim via a civil case. Since counterfeiting is a crime, the case is to be heard within 3 years. This offence is punishable by four years imprisonment and a fine of 400,000€ (if the offence is carried out by organized crime the sentence can be extended to five years imprisonment and a 500,000€ fine). Judges have the right to pass additional sentences at their discretion: they can publish both the verdict and the sentence, as well as confiscating items and objects used to commit the crime.
Customs interceptions at French borders provide IP title holders with effective protection of their rights. Community Law established by two regulations(1) also ensures that Customs checks regarding IP rights are very effective.
On June 11 2013 the European Parliament adopted new regulations relating to Customs operations in order to ensure a greater respect for IP rights. This will be applicable from January 1st 2014 onwards and will replace European Community regulation 1383/2003 by introducing certain improvements:
- The simplified procedure will lead to the destruction of counterfeit goods, without a Court Order, providing that the rights holder gives their agreement as must the importer.
- Those who are surprised to receive small quantities (under 2 kilos) of counterfeit goods in the post, will have 10 days in which to consent to their destruction without having to pay for their storage or removal.
- The list of protected IP rights has been extended to provide even greater protection (protection of commercial names, topographies of semi-conductors…).
- The existing process for the rapid destruction of counterfeit goods is now compulsory in all member States.
- Exercising the right to be heard has been harmonized concerning those for whom the seizure may be detrimental.
We cooperate regularly with Customs authorities in the fight against counterfeit and piracy in every area of intellectual property. We are available to advise you on the best strategy to adopt in order to establish an effective Customs watch.
(1)Regulation no 1383/2003 of July 27 2003, supplemented by regulation no 1891/2004 of October 21 2004