Defence and customs protection of intellectual property rights

Yes, EU regulations provide for a procedure for goods suspected of infringing intellectual property rights which are, or should be, under customs supervision or subject to customs control within the customs territory of the Union, and in particular goods declared for release for free circulation, export or re-export, when they are introduced into or leaving the customs territory of the Union and when they are included in a suspension regime or in a free zone.

The intervention of the customs authorities will consist of suspending the granting of release or retaining those goods suspected of violating certain intellectual property rights until they are destroyed, or until it is determined whether they are in fact goods that violate these rights.

Customs does not decide on the possible violation of rights. Customs only applies, from a neutral position, a regulated procedure, aimed at detecting possible violations of rights, facilitating the agreement between the parties involved and, where appropriate, guaranteeing the exercise of the jurisdictional actions that they consider pertinent .

• The goods:

  • that have been released for free circulation under the SPECIAL DESTINATION regime
  • of non-commercial character contained in the personal luggage of the TRAVELERS
  • manufactured with the consent of the rights holder but distributed outside the official distribution network (parallel trade)
  • manufactured by a person duly authorized by the rights holder to manufacture a specified quantity of them in excess of the quantity agreed between that person and the rights holder (overproductions)

• In general, goods suspected of infringing an intellectual property right that are, or should be, under customs surveillance or subject to customs control, and in particular goods that are in the following situations:

  1. when they are declared for release for free circulation, export or re-export;
  2. when they enter or leave the customs territory of the Union;
  3. when they are included in a free zone or suspension regime
  4. In particular, when they are included in a customs transit regime (non-Community goods that circulate from one part of the TAU to another under a suspensive regime, subject to surveillance and control, but may not be destined for the EU market), unless the declarant or the owner of the products can demonstrate that the owner of the Union trade mark is not entitled to prohibit the marketing of the products concerned in the country of end-use.

a) a brand; b) an industrial design; (c) a copyright or any other related right under national or Union law; (d) a geographical indication; (e) a patent under national or Union law; (f) a supplementary protection certificate for medicinal products, (Regulation (EC) 469/2009 of 6 May 2009 on the supplementary protection certificate for medicinal products; (g) a supplementary protection certificate for plant protection products, provided for in Council Regulation (EC) No 1610/96 of 23 July 1996 creating a supplementary protection certificate for plant protection products; (h) a Community plant variety right, in accordance with Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights; (i) a plant variety right in accordance with national rules; (j) a topography of a semiconductor product provided for in national or Union regulations; (k) a utility model to the extent that it is protected as an intellectual property right by national or Union law; (l) a trade name to the extent that it is protected as an exclusive intellectual property right by national or Union law.

That is, all intellectual property rights, excluding parallel trade (goods manufactured with the consent of the rights holder) and overproduction (goods manufactured by a person authorized by the owner, above the agreed quantities) (art.1.5 R(EU) 608/2013). (Recital 6 of the preamble to R(EU) 608/2013 excludes them because they have been manufactured with the consent of the rights holder, although marketed for the first time in the European Economic Area without his consent. Although it is illegal trade, they have been manufactured as authentic and it is considered that efforts should not be wasted on customs control in these cases.