EU Regulation 608/2013 strengthens customs authorities’ ability to take action against counterfeits
A new EU Regulation 608/2013 concerning customs enforcement of intellectual property rights entered into force as of 1 January 2014, repealing the previous Regulation 1383/2003/EC. The aim of the New Regulation is to strengthen the powers of customs authorities to detain suspected counterfeit and pirated goods at EU borders. Under the previous Regulation, it was also possible to prevent goods infringing certain intellectual property rights from entering into the EU, with trademarks, copyright, design rights and patents being the main rights protected. Customs authorities could detain goods suspected of infringing intellectual property rights ex officio following routine inspections of goods at the border. Alternatively, goods could be detained after a rights-holder had made an application to the customs authorities describing their authentic goods and intellectual property rights, and asking them to be on the alert for counterfeited and pirated goods.
One of the major weaknesses of the previous regime under Regulation 1383/2003/EC became apparent by the changes in the way counterfeit goods are most commonly traded throughout the EU. In recent years, goods have been increasingly shipped in small consignments from countries such as China (which is an active producer of counterfeit goods) to end users in the EU. This has made customs enforcement increasingly difficult and time consuming for rights-holders as they have been forced to contact each declarant of detained goods and request that they agree to the destruction of the goods. Dealing with small consignments has in many cases been excessively time-consuming, even using a simplified procedure. This shortcoming has been addressed under the new regulation which allows for small consignments of counterfeit and pirated goods to be destroyed without the rights-holder having to contact the declarant in each case.
The New Regulation retains the basic application/detention procedure of the previous regime but introduces a number of changes to improve the position of rights-holders:
The new regime has been extended to cover a wider range of intellectual property rights, namely trade names, topographies of semiconductors, utility models and devices which are designed to circumvent technological measures;
all Member States must implement a simplified procedure which allows the destruction of infringing goods more swiftly by agreement of the rights-holder and the declarant without initiating court proceedings;
rights-holders may “opt-in” for a special small consignments procedure, which allows the destruction of infringing goods without involving the rights-holder in each case;
rights-holders have a greater freedom to use information provided to them by customs, e.g. for follow-up civil and criminal action against the infringers; and
the Regulation is underpinned by a new EU-wide...