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Trademarks - Anti-counterfeiting: Customs watch applications - European Union

In the EU, there are both community and national applications for customs action. This section provides guidance on how to register EU-wide customs watch applications, as well as national applications within the EU and beyond.

EU-wide Customs Applications

There are two distinct customs notification procedures in the EU albeit that they are created under the same regulation (EU) No 608/2013 - Union and national applications for customs action.

Union customs applications can cover all or some of the 28 Member States of the EU. They can be based on European Union trade marks (EUTMs), International Registrations designating the EU, Community Designs (CDs) and other community rights. Unlike national customs applications, Union customs applications cannot be based on national trademark and design rights, copyright, patents and other national rights. 

Frequently Asked Questions

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-Why record an EU-wide customs application?

Union customs applications are an effective tool for ensuring customs protection in the entire EU (or in selected EU member states) based on European Union trade marks or registered Community Designs. The main advantages of a Union customs application are:

  • One application - up to 28 Member States
  • EU-wide customs applications ensure customs protection at the external border of the EU
  • Various IP rights (EUTMs and CDs) of one rights holder can be covered by one application
  • No official fees for filing or renewal
  • Cost and time savings on managing EU-wide customs applications - One single EU-wide customs application and one annual renewal replaces all national customs applications and the need to renew all of them annually
  • Only one point of contact for all 28 Member States is possible.

 


-Is a local agent required? If so, is a power of attorney required?

Applicants must appoint contacts (for legal and technical questions) to liaise with local customs in each Member State designated. This can be done either by appointing local agents in the designated Member States or by having a single point of contact in one Member State and engaging local agents only as required or if customs seizure arises. It is not necessary for the individual(s) to be situated in the Member State in which the application is made, but they should be located within the European Community. 

If local agents are appointed, a power of attorney is required in most EU countries, either upfront or at a later stage for customs intervention. It is therefore advisable to have a power of attorney in place for local agents in each EU Member State designated from the outset.


-Are there any fees or local procedural requirements?

There are no official fees for filing or renewing the EU-wide customs application. Instead, the applicant must provide a declaration (cost undertaking) assuming the costs that may arise as a result of customs actions (e.g. storage costs, destruction costs). This undertaking forms part of the new application form.

However, there can be a good deal of work involved in preparing the application and complementing the application with useful information for customs. Also, translations into local languages may be required, although the majority of customs authorities accept documents in English.

Some jurisdictions may also impose additional requirements for the EU-wide application to become effective nationally. We would be able to advise you further on any local procedural requirements imposed by your jurisdictions of interest, should you wish to file an application in specific Member States.


-How do you file an EU-wide customs watch application?

Applicants only need to file an application with the national customs authority of one of the EU Member States - two copies of the application and its attachments are required. This national customs authority then becomes the 'supervising authority', which approves the application (renewals, extensions) and notifies the decision to the customs authorities in the Member States nominated.


-How long does it take and what is the term of protection?

It takes about 2 months for an EU-wide customs application to become effective in all of the designated Member States. First, the supervising authority takes some time to process the initial application and accept it. However, it must render its decision within 30 working days of filing. After acceptance, it shall without any delay notify the decision to the relevant Member States.

EU-wide customs applications are valid for one year. They can be renewed annually by filing a renewal request with the supervising authority. The supervising authority then notifies the respective national authorities about the renewal.


-What documentation is required or recommended?

Besides the application form (to be accompanied by a power of attorney if filed by a representative), applicants must give a cost undertaking (assuming the costs that may arise as a result of customs actions), which is now part of the application form, and provide registration certificates of the relevant IP rights (usually EUTMs and CDs). It is also necessary to provide information to the customs authorities about how they can distinguish genuine goods from counterfeits, including details and description of authentic goods, their value, distinctive features, place of production and official distribution channels.

Translations into local languages of the supporting documentation may be required, although the majority of customs authorities in the EU accept documents in English. In relation to customs guides explaining how to distinguish genuine goods from counterfeits, it is advisable to prepare them in English and translate them into German, French, Spanish and Italian. These language versions usually cover the key jurisdictions and other language versions are only rarely required.