Important Brexit fallout for EU Customs enforcement – the Commission states its position

The EU Customs enforcement regime

Having secured the appropriate intellectual property right protection in the EU, often the front line in the battle against counterfeit and copycat products flooding into the EU, often from China, is Customs enforcement. EC Regulation 608/2013 (the “Customs Regulation”) allows an IP right holder to apply to Customs authorities throughout the EU asking that they search for and detain goods entering (or indeed leaving) the EU which are suspected of infringing the rights holder’s trade marks, designs, copyright or patents. In the event that a detention is made, the party responsible for the detained goods will very often consent to their destruction (or such consent will be assumed), meaning that the issue is resolved quickly and inexpensively. Only if the party objects to destruction will court proceedings be needed to determine infringement. Because of this, Customs enforcement offers the rights holder a cost effective means of stopping large quantities of infringing goods from ever getting on to the market in the EU in the first place.

The application for action under the Customs Regulation, or AFA, can be of two types: (i) a national AFA, effective only in the member state in which it is made and used where the AFA is based on national rights (i.e. national/EP patents, national trade marks and designs); or (ii) a Union AFA which can designate action be taken in any or all EU member states and used where the AFA is based on unitary EU-wide rights (i.e. EUTMs, Community designs and, in due course, unitary patents). When filing a Union AFA seeking action in more than one EU member state, the rights holder has a choice of which country’s Customs authority it wishes to apply through. A UK company seeking Customs action throughout the EU would typically choose to file the Union AFA through UK Customs (HM Revenue and Customs) simply as a matter of convenience, even though it could equally be filed through Customs in any other EU member state instead.

The impact of Brexit on ongoing EU Customs enforcement

Given the importance of Customs enforcement to rights holders in the UK and the rest of the EU, the impact of Brexit on this area has received surprisingly little attention. One explanation for this is that until there is agreement as to what will happen with the underlying EU IP rights following Brexit, considering the enforcement mechanisms for these rights may be seen as putting the cart before the horse. There is however now an update from the Commission on its intentions for Customs enforcement following Brexit, in the form of a Notice to Stakeholders dated 4 June 2018 –  https://ec.europa.eu/taxation_customs/sites/taxation/files/notice-to-stakeholdersI-brexit-ip-enforcement-final_en.pdf.

Read the article in full at twobirds.com to find out more about the impact of Brexit on ongoing EU customs enforcement.

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