GUIDE ON CUSTOMS‘ PROCEEDINGS FOR THE … · 28002 Madrid SPAIN T + 34 915 642 300 ... Provide contact information of a representative of the right holder/licensee in ... importers

Velázquez 146. 1º Derecha

28002 Madrid SPAIN

T + 34 915 642 300

F + 34 915 633 538

www.sfplegal.comJoaquin Costa 24

28002 Madrid SPAIN

T + 34 915 642 300

F + 34 915 633 538www.sfplegal.com

GUIDE ON CUSTOMS‘ PROCEEDINGS FOR THE

SEIZURE OF COUNTERFEITS IN SPAIN AND

THE EU

Counterfeits cause considerable harm to the holders of intellectual

property rights, both economical (resulting from the loss of benefits), and

moral (derived from the damage to its good will and reputation).

Depending on the type of product, counterfeits can also endanger the

health and safety of consumers producing irreparable harm.

In view of the above, right holders of intellectual property rights need

effective solutions to fight piracy, preventing the entry into the market of

counterfeits at both national and EU level.

To this end, the EU and Member States have established, by means of

Regulation (EU) 608/2013 concerning customs enforcement of intellectual

property rights, a procedure enabling Customs’ authorities to detain goods

suspected of infringing intellectual property rights effectively.

PRESENT SITUATION

Spain has a strategic location:

Entry point of counterfeits in the EU market.

Transit point for goods from Asia and / or Africa.

9th position by number of seizures in the period of 2013-2014

According to data provided by the European Commission in its Customs 2014 report

(the last published).

FIGHT AGAINST COUNTERFEITS (I)

Total nr. of cases in EU 2013 2014

Cases 86.854 95.194

Total items seized 35.940.294 35.568.982

Total nr. of Cases in Spain 2013 2014

Cases 4.032 3.410

Total items seized 3.522.272 1.619.264

According to statistical studies by the European Commission, the number of counterfeit

goods detained by Customs in Europe has declined considerably in recent years.

FIGHT AGAINST COUNTERFEITS (II)

Source: European Commission.

According to statistical studies by the European

Commission, approximately 80% of counterfeit goods come

from China.

ORIGIN OF COUNTERFEITS

Source: European Commission.

According to statistics from the European Commission the principal method of

delivery is by mail (small shipments).

However, the preferred means of introducing large quantities of products in

the EU is by sea freight.

The ratio between the number of cases of goods suspected of infringing an IP right found in

freight and in passenger traffic is around 97% and 3% respectively.

MAIN MEANS OF TRANSPORT

Source: European Commission.

In terms of numbers of detained articles, the top 3 categories are cigarettes,

toys and medicines.

CATEGORIES OF ARTICLES SUBJECT TO

COUNTERFEIT

Source: European Commission.

Customs authorities can act:

•Ex officio

•As a result of an application for action

In the last decade, the number of applications for customs action in

Member States has doubled.

APPLICATIONS FOR ACTION (I)

Source: European Commission.

Comparative percentage of seizures carried out ex officio and

resulting from an application for action

APPLICATIONS FOR ACTION (II)

Source: European Commission.

TYPES OF APPLICATION FOR ACTION ACCORDING TO THE SCOPE

OF PROTECTION:

APPLICATIONS FOR ACTION (III)

Coexistence of two main systems of protection:

National system: The protection granted is limited to the Spanish Territory.

EU system: With a single application, protection can extend to all Member

States (or more than one state belonging to the EU). In this case, the

applicant must designate a representative in each Member State.

With the exception of scope of protection, the general principles applicable to

both systems are basically the same.

REQUIREMENTS TO REQUEST AN

APPLICATION FOR ACTION

Hold an intellectual property right and provide evidence, or

Hold an exclusive license over an intellectual property right provided the

licensee has been formally authorized by the right holder to act in defense of

the intellectual property rights.

Fill the specific application form before the competent Customs’ Authority.

Provide contact information of a representative of the right holder/licensee in

each Member state where protection is sought and an authorization to act on

their behalf.

Provide accurate and detailed technical information of both, original goods

and counterfeits (photos, product description, usual routes, etc.)

Undertaking of the right holder taking responsibility for the damage that the

seizure may cause to third parties, the costs of storage and destruction of

counterfeits.

EFFECTS OF AN APPLICATION FOR ACTION

The Customs Authorities undertake to seize all goods suspected to

infringed the applicants’ designated IP rights.

After a seizure, Customs Authorities shall notify the contact person

designated by the applicant of the seizure file and shall upon its request ,

provide contact information of the importer / consignee of the goods and

pictures or samples of the products to determine the falsehood of the

goods.

Once the counterfeited nature of the goods is confirmed, Regulation

(EU) 608/2013 provides for two different procedures to be carried out in a

ten-day term since the notification of the seizure file.

• Regular procedure

• Simplified procedure

EFFECTS OF AN APPLICATION FOR ACTION

(II)

Regular procedure:

File a criminal/civil complaint before the competent Court. (In civil

proceedings forum shopping would be possible).

Simplified procedure:

The holder of the application for assistance may address a

communication to the owner of the products requesting the destruction

of the goods.

Lack of reply to the aforesaid communication shall result in the

destruction of the goods without the need to start criminal

proceedings.

Opposition to the destruction shall imply the need to start criminal

proceedings however according to our experience, importers do not

oppose to the destruction.

REPORT ON EU CUSTOMS ENFORCEMENT OF

IPR -2014

In 85% of cases , the products have been destroyed

In 6.14% of cases criminal proceedings have been initiated.

In 2.82% of cases, the right holder confirmed that the merchandise was

original and the goods were released.

In 0.11% of cases, an agreement was reached with the owner of the

goods, including the release of the retained merchandise

Source: European Commission.

ADVANTAGES OF THE CUSTOMS’

APPLICATION FOR ACTION

It is an effective way to prevent the entry of counterfeit products on the

market .

It provides relevant information regarding the importer / exporter that is

necessary to start Court actions against them.

In the same application for action several intellectual property rights may

be designated.

The Regulation provides for a simplified procedure through which the

destruction of the goods detained can be achieved without starting legal

proceedings.

Applications for action are valid for one year and are renewable for

successive one-year periods.

With a single application for assistance, protection can be obtained at

customs at all member states of the EU.

RELATED LINKS

Regulation (EU) 608/2013 concerning customs enforcement of intellectual

property rights

Report on EU Customs enforcement of intellectual property rights.

Results at EU border 2014.

EU customs action to tackle the infringement of intellectual property rights

– Frequently Asked Questions

Statement pursuant to Regulation (EU) 608/2013 .

Velázquez 146. 1º Derecha

28002 Madrid SPAIN

T + 34 915 642 300

F + 34 915 633 538

www.sfplegal.comJoaquín Costa 24

28002 Madrid SPAIN

T + 34 915 642 300

F + 34 915 633 538

www.sfplegal.com