New decree law clarifies customs action

Decree Law 360/2007 has entered into force. It provides uniform criteria to end the uncertainty surrounding the implementation of Council Regulation 1383/2003 on customs action against goods suspected of infringing certain IP rights.

The law, interpreted in conjunction with the Council Regulation and the Portuguese Industrial Property Code, introduces the following significant changes:

• Infringement proceedings against suspected counterfeiters must be initiated by the trademark owner, and not by the public attorney as was previously the case; and
  
  
• Customs is no longer considered to be the competent body to hear criminal counterfeiting proceedings; such proceedings must now be heard by the courts.

Under the new law, the main features of customs actions are as follows:

• Customs must notify the IP owner or its representatives if there is a suspicion of infringement.
  
  
• A suspicion of infringement is sufficient for the products to be detained by Customs; it is not necessary to demonstrate that IP rights have been violated.
  
  
• Customs may use a simplified procedure for the destruction of the goods.
  
  
• The parties may reach agreement with regard to the destruction of the goods during a period of 10 working days (which may be extended by a further 10 days) from the date on which Customs notified the parties of the detention of the allegedly counterfeit goods. The agreement must be in writing.
  
  
• If the IP rights owner has given its written consent for the destruction of the goods and the infringer has not expressed its opposition, it is presumed that the parties have agreed to the destruction of the goods.
  
  
• The IP rights owner may expressly renounce any legal claims against the infringer.
  
  
• If the IP rights owner has not renounced its claims and no agreement to destroy the goods has been reached during the 10-day period, the owner must provide evidence to Customs that legal proceedings have been initiated in court. If the IP rights owner fails to provide such evidence, the customs intervention ceases.
  
  
• The costs of storage and destruction of the goods are paid by:
  
  
  • the infringer if the simplified procedure is followed; or
    
    
  • the losing party if the owner initiates court proceedings.
    
    
• If the IP rights owner has initiated court proceedings, it must pay the storage costs until effective payment by the infringer. In order to be reimbursed, the owner must make a claim for damages.
  
  
• If the parties do not reach a settlement and the IP rights owner fails to bring proceedings during the relevant time limit, Customs will release the goods.

Paula Martinho da Silva, AM Pereira Sáragga Leal Oliveira Martins Júdice E Associados - Sociedade De Advogados - RL, Lisbon