Hogan Lovells

Hogan Lovells' LimeGreen IP

The site will give you an overview of Intellectual Property law and related procedures, and how these may differ from country to country.

Trademarks - Anti-counterfeiting: Customs watch applications - Germany

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-Are there any fees or local procedural requirements?
  • Filing a customs watch application with the German customs is free of charge.
  • The simplified procedure according to Article 23 Regulation (EU) 608/2013 is frequently used to achieve swiftly the destruction of infringing products.
  • Usually, German customs organize the destruction of infringing products. To this end, applicants give their general consent to customs organising the destruction according to the simplified procedure on their own authority when filing the customs watch application. Customs then collects products of different detentions allowing for a cost-saving destruction also of low quantities. The costs of such common destructions will be shared among the rights holders concerned. The applicant's general consent to customs organising the destruction can be withdrawn anytime.

-How do you register a customs watch application?
  •  Customs watch applications are filed with the German Customs' Special Unit for IP Right Protection having its principle seat in Munich.
  • The application is not necessarily filed in the name and on behalf of the rights holder but can also be filed by another authorised user of the IP rights at issue and in particular licensees and affiliated companies.
  • European customs watch applications according to Articles 5 and 6 of Regulation (EU) 608/2013 can cover inter alia trademarks, copyrights, design rights, patents, supplementary protection certificates, plant variety rights, designations of origin and geographical designations protected by the European Union.
  • In addition to the European customs watch applications, national German customs watch applications can be filed which notably allow to also take action against illegal parallel imports ("grey imports").
  • German customs can also take action ex officio, if suspicious goods are detected but no customs watch application is in place. In this event, customs will suspend the release of the products for a period of four working days to give the rights holder the opportunity to submit a customs watch application.

 


-How long does it take putting a customs watch application into place and what is the term of protection?
  • Customs watch applications can be filed with the German customs anytime. German customs will decide quickly about the application and in any event will render their decision within 30 working days upon receipt of the application. Upon acceptance, the application including the supplementary information will be communicated immediately to all German customs offices via the customs online watch database. In case of European applications according to Regulation (EU) 608/2013, German customs will pass on their decision at the same time to all designated EU Member States.
  • Customs watch applications are granted for a 12 months term in Germany. If the protection period of IP rights covered by the application expires during the term and the rights are not renewed, they will automatically be removed from the application. Applications for renewal shall be filed 30 working days prior to the end of the current term online through the customs database.

-If filing on behalf of a subsidiary of the IP rights holder what evidence of connection to the parent company is required?
  • The subsidiary needs to file a document evidencing that it is an authorised user of the IP rights covered by the application. A statement by the rights holder (including translation into German, where necessary) suffices.

-Is a local agent required? If so, is a power of attorney required?
  • A local agent is required to handle the individual detentions executed by German customs on grounds of the application because German customs do not send samples abroad and communicate in German. One and the same person can be designated as contact person in both technical and administrative matters.
  • A power of attorney is required for filing the application but not for handling individual detention cases provided the attorney was designated in the application as local contact person.

-What documentation is required or recommended?
  • The application should contain:
    • The completed application form including the details of the rights holder's local representatives. The local representatives will be approached by customs in case of suspicious shipments.
    • A Power of Attorney evidencing that the attorney filing the application is authorised to do so.
    • Evidence for the IP rights covered by the application (e.g. copies of registration certificates for registered IP rights).
    • Evidence for the applicant being empowered to file the application (e.g. evidence for the applicant being authorised user of the IP rights covered by the application).
    • Supplementary material which allows customs to distinguish genuine and counterfeit products.
If a national German application shall be filed alongside a European application, the supplementary information has to be filed in German. In case of a truly European application covering several EU Member States, filing the supplementary information in English is regularly accepted but including an additional German version is recommended because this increases considerably the chances of customs action in Germany. 
  • Such supplementary information can include for example,
    • Photographs of genuine packaging and information on the consignment of genuine products
    • Technical descriptions of genuine products
    • Information on the route of transport and means of transport of genuine products
    • Information on authorised distributors and transport companies
    • Photographs of counterfeit products /illegal parallel imports
    • Information on features of counterfeit products / illegal parallel imports and tools to verify the genuineness of goods
    • Information on the route of transport and means of transport of counterfeit products / illegal parallel imports
    • Information on the identity of known infringers
  • In the case of a European application on grounds of Regulation (EU) 608/2013:
    • An undertaking duly signed by the rights holder or authorized user whereby he undertakes to 
      • assume liability in the event that a customs detention is discontinued owing to an act or omission on his part, samples taken are either not returned or damaged and beyond use owing to an act or omission on his part, or where the goods in question are subsequently found not to infringe an intellectual property right;
      • notify customs of any change in the future regarding the validity and ownership of his IP rights, entitlement to submit the application or the supplementary information filed together with the application;
      • forward and update any information relevant to the customs' analysis and assessment of the risk of infringement of the intellectual property right(s) concerned;
      • indemnify customs upon request for the costs of their taking action on grounds of a European customs watch application.
    • The rights holder's or authorized user's agreement regarding the processing of the data he has provided by the European Commission and the Member States;
    • A statement whether the rights holder or authorized user requests the use of the procedure for the destruction of goods in small consignments and agrees to cover the costs related to destruction of goods under that procedure, where requested.
  • In the case of a national German application: A security bond issued by a bank with a branch in Germany whereby the bank promises to make payment to indemnify the State for damages suffered because of actions taken on grounds of a national German customs watch application.


-What level of understanding of IP rights is available from customs? Are additional procedures or training required?
  • IP Protection is conducted in Germany by a specialized customs unit with complete understanding of IP rights. On hotspots of counterfeit trade such as Hamburg Harbour and Frankfurt Airport officers handle hundreds of detention cases every year and are highly knowledgeable about all legal aspects including the scope of different IP rights. Where infringements occur on a considerable scale, customs investigations officers investigate cases in police function and ultimately supply the prosecuting authorities with the facts to try infringers also in criminal court.
  • German customs is very determined to fight counterfeiting and therefore keen on meeting right holders for training purposes. A very good opportunity to spread knowledge about infringing goods all over Germany is attending the quarterly training courses at the headquarters of the Special Customs Unit for IP Protection in Munich where customs officers from all over the country are updated with regard to detecting and seizing infringing products.

-When customs report on a finding how long does the rights holder have to respond and what steps are required to ensure non-release of counterfeit goods?
  • In procedures on grounds of a European application according to Regulation (EU) 608/2013, the rights holder has 10 working days to verify whether the detained products are infringing and, if they are, to take action. Where perishable goods are concerned, action needs to be taken within 3 working days.
  • To determine the next steps, the rights holder will, upon request, be supplied by customs with pictures or samples of the suspicious goods and information about the identity of the recipient of the goods and their possible representative such as transport companies.
  • Taking action means sending a written confirmation to customs that the detained products infringe IP Rights and that the rights holder or authorized user consents to their destruction. If, upon receipt of the customs' notification about the detention, the recipient consents to the destruction or simply does not respond at all, customs will proceed with the destruction of the products. Most cases are solved in this way. If the recipient opposes the destruction, the right holder needs to initiate proceedings with the civil law courts to prevent that the products are released by the end of the deadline but this rarely occurs.
  • An extension of the deadline for a maximum 10 further working days is possible. The decision about granting an extension of the deadline is left to customs' discretion.
  • In procedures on grounds of a national German application, the rights holder does not have to take any action unless the recipient of the infringing goods opposes the destruction within a period of 2 weeks upon being notified about the detention by customs. If the recipient opposes in time, the right holder has to inform customs immediately whether he wishes the detention to be maintained and if so, needs to start court action to prevent the products' release. The rights holder has at maximum 4 weeks to obtain a court order prohibiting the disposal of the products.
  • If appropriate, the German Customs will inform the prosecuting authorities and initiate criminal proceedings against the recipient and its possible accomplices. Often, the necessary investigations will be conducted by the German Customs' police forces, the customs investigations. The rights holder can - but does not have to - take part in such criminal proceedings by filing a criminal complaint and ultimately becoming a joint party in a possible criminal trial.