Customs border seizure
The European Community Seizure Procedure
A procedure for the seizure of goods by customs authorities is generally limited to goods imported into or exported from the EU. If the IP right holder has a reasonable suspicion that counterfeit goods are being imported at the EU borders, an application can be filed with customs, ideally also detailing how the original goods differ from the counterfeit.
If counterfeits are accidentally discovered by the authorities, customs will inform the IP right holder. In this case, the IP right holder must file the application within 10 days, which is valid retroactively.
What happens to the seized goods?
What happens to the confiscated goods when the infringement of the property right is proven can be decided by the property right holder. Suppliers and dealers have the right to object to the destruction of goods.
If the objection is not made within the objection period provided for this purpose, this is taken as consent to the destruction of the counterfeit goods. In most cases, the goods are destroyed after the IPR holder and the owner of the goods have agreed to the destruction. In 2020, about 83% of seizure proceedings initiated by customs authorities were handled in this way. (Source: EUIPO, 11/21)
Goods are released again after seizure if there is no reaction on the part of the rights holder to the notification from customs or if it can be proven that the goods are original, which happened in about 10% of cases in 2020.
The third scenario (identified at 7% in 2020) is that legal proceedings or criminal proceedings are initiated. It also happens that an agreement can be reached between the owner of the property right and the owner of the goods.
Costs associated with seizure proceedings
Customs does not charge for applying for a procedure to seize goods suspected of infringing intellectual property rights.
The owner of the property right is responsible for proving the infringement of the property right. Customs has the task of seizing the allegedly counterfeit goods and removing them from circulation in this way until the infringement of the property right has been proven on the part of the property right holder.
The costs of storing and destroying seized goods, which the property right owner must first advance, can be reclaimed from the infringer as part of a claim for damages.
If it turns out that the goods are not counterfeit after all, the rights holder is liable - and he must also pay for the costs incurred by customs in detaining the goods.
Patent attorney advice to prevent product piracy
Our law firm can assist manufacturers to effectively combat product piracy and provide strategic advice on how to protect original products for this purpose.
In order to prevent product piracy, we advise our clients on the extent to which the product in question is protectable and what product adaptations can be made in order to obtain patent, trademark or design protection.
In defending against product piracy, we support our clients with experienced attorneys in obtaining preliminary injunctions esp. at trade fairs (see also blog: Plagiarism at trade fairs - Infringement of patents and utility models), in border seizure proceedings and in asserting claims for information, damages and destruction.
Regarding Matthias Rößler:
Matthias Rößler, German and European Patent Attorney since 2003, studied mechanical engineering at the RWTH Aachen. He is co-founding partner of karo IP. A main focus of his practice is the management of large patent portfolios and the enforcement of bilateral litigation proceedings before patent offices and patent courts. His additional qualification as Master of Laws (LL.M.) qualifies him especially for multinational infringement matters in Europe.