New rules make it tougher to get infringing goods across borders

Rights holders now have a better chance of stopping counterfeiters bringing infringing goods into the European Union. Under a regulation implemented last week, member state customs authorities are given greater authority to investigate and detain suspect goods at the border.

In 1994 the Council of the European Union introduced a regulation enabling customs authorities to take an active role in the fight against IP rights infringement. The purpose of this regulation was mainly to prevent counterfeited goods from entering the marketplace before the rights holder can take legal action.

The new regulation clarifies and strengthens these existing procedures. Among other things, it provides that:

• rights holders are no longer obliged to pay a fee or provide security when asking customs authorities to intervene. However, the rights holder must accept liability in the event that he/she does not pursue legal action or a court rules that the goods do not infringe the rights holder's exclusive rights. The rights holder must also pay all expenses related to the storage of the goods during the investigation;
  
  
• rights holders can ask that samples be taken out of a consignment, to help with further analysis of the potentially infringing goods prior to a trial;
  
  
• customs authorities can intervene on their own initiative and suspend goods if they have sufficient reason to believe such goods are counterfeit. The authority shall then notify the rights holder; and
  
  
• consignments can be destroyed before the dispute goes to trial provided the rights holder, the person making the declaration and the owner of the goods agree. The goods are destroyed at the expense of the rights holder under the supervision of the customs authority.

The customs authority shall decide within 30 days whether to uphold the suspension. If the decision is in favour of the rights holder, the customs authority sets the period of time - maximum one year - during which it will continue to intervene. The rights holder must decide within 10 days whether to pursue the claim in the courts. If the rights holder goes ahead, the appropriate court shall rule whether the goods infringe IP rights and impose any necessary sanctions according to national law. If not, the goods will be released.

For background discussion, see Commission gets tough on counterfeiting and piracy.

Jeppe Brogaard Clausen and Carsten Sørensen, Magnusson Wahlin Qvist Stanbrook Advokataktieselskab, Copenhagen