New EU Customs Regulation

19 Feb 2014

With effect from 1 January 2014, a new Customs Regulation came into force in the European Union, which replaces the existing Customs Regulation. The new Regulation gives Customs authorities extended powers to detain suspected counterfeit and pirated goods at the borders of the European Union; and new powers to detain 'small consignments' of goods sent into the EU.

The UK Border Force will continue, as under the old Regulation, to detain suspected infringing goods coming through seaports and airports and will notify IP rights owners. Under the existing 'simplified procedure', rights owners will seek the consent of the declarant or holder of the goods to destruction of the goods. If consent is not forthcoming within 10 days, there is deemed consent to destruction.

Here is a summary of the significant changes under the new Regulation:-

• Applications by IP rights owners to the Customs authorities to take action to detain suspected counterfeit or pirated goods made on a single, new form (the Application for Action form, or 'AFA'). No fee is payable to Customs for the AFA.

• In addition to current IP rights provided by trade marks, designs, copyrights, geographical indications, patents, supplementary protection certificates and plant variety rights, the following IP rights are now also covered: topographies of semiconductor products, utility models and trade names. However, the latter two are not recognised as IP rights in the UK.

• The AFA includes undertakings by the IP rights owner (as in the current procedure) to pay the value of samples not returned, or damaged (if subsequently found not infringe) and the costs incurred by the Customs authorities, including storage and handling of the goods and the costs of destruction of the goods.

• There will be a single, standard procedure throughout the EU based on the existing 'simplified procedure'.

• Small Consignments

There is a new procedure for the destruction of counterfeit or pirated goods transported in 'small consignments', ie postal or express courier consignments which each contain 3 units or less, OR which has a gross weight of less than 2 kilograms; but this does not apply to perishable goods. The 'small consignments' procedure works as follows:-

o The IP rights owner will have the option to use the procedure.

o If the IP rights owner opts in to the procedure, Customs will notify only the declarant or holder of the goods in the small consignment/s of the fact that the goods have been detained. The declarant or holder of the goods then has 10 days, either to consent to or to object to destruction of the goods. If nothing is heard from the declarant or holder of the goods within that time, the goods will simply be destroyed.

o Customs will then send the IP rights owner an invoice for the destruction costs, payable by the IP rights owner. The invoice should show the actual or estimated quantity of the goods and the nature of the goods.

o If the declarant or holder of the goods objects to destruction of the goods within time, Customs will detain the goods, disclose all the nominal information to the IP rights owner and allow the IP rights owner to consider the nature of the goods and, if appropriate, to initiate court proceedings within a specified deadline. IP rights owners will need to decide whether it will be in their best interests to opt for this procedure. There are advantages and disadvantages of doing so.

Central Database

A new EU-wide centralised database, called the COPIS database (anti-Counterfeit and Piracy Information System), came into operation from 1 January 2014. It is an automated system which will handle and record all AFAs and renewals of AFAs and will retain data on all infringements.

Goods in Transit

The new Customs Regulation does not deal expressly with counterfeit goods in transit, ie goods shipped from a country outside the EU, through an EU port and which are supposedly destined for a third country outside the EU. The EU parliament is currently considering proposals to amend the substantive EU law on trade marks, to provide that counterfeit goods in transit are, in certain circumstances, infringing goods and could thus be detained by Customs under the Customs Regulation.

However, it seems that it will take some time for the new trade mark law to come into force; and, also, the substantive law is not being amended in respect of goods in transit which infringe any other IP rights, such as design rights, copyrights or patents.

Collyer Bristow is of the view that, in certain specific circumstances, until the new EU trade mark law comes into force in respect of trade-marked goods, it should be possible to rely on the new Customs Regulation to have any counterfeit goods detained while they are in transit.

For anyone with a major problem relating to counterfeit or pirated goods in transit, further information is available from This email address is being protected from spambots. You need JavaScript enabled to view it. Collyer Bristow provides advice and assistance to clients wanting to submit AFAs to the Customs authorities.

Collyer Bristow co-ordinates the operation of AFAs in the other countries of the EU through its associates in those countries. Collyer Bristow will, as necessary, take cost-efficient court action on behalf of clients when a dispute arises as to whether goods are counterfeit or pirated.

Additional information