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 - France

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-How do you register a customs watch application?

A rights holder files an application with the French customs authorities to request that they implement a watch program over suspect goods which may infringe their IP rights.

The application is not necessarily filed by the rights holder itself. Any representative of the rights holder or any authorised user of the IP rights at issue may also file an application. 

The application can cover all intellectual property rights, in particular, trademarks, designs, patents and author rights.


-What documentation is required or recommended?

The EU customs regulation has been amended and regulation No. 1383/2003 has been replaced by regulation No. 608/2013, which came into force on 1 January 2014. From a practical point of view, the way the watch application is put in place is broadly the same. The main change is that it is now required (it was only optional before) to provide the customs authorities with reliable technical information.

It was already required before 1 January 2014 to include in the application: 

  •  Evidence of the relevant IP rights (e.g., copies of registration certificates for registered IP rights or evidence of authorship for unregistered IP rights),
  • An undertaking duly signed by the rights holder whereby they undertake to inform the customs authorities of any change in the future regarding the validity and ownership of their IP rights and accept to cover the costs resulting from the storage and destruction of the counterfeit goods seized,
  • Details of the rights holder's local representative, such as its French in-house or outside counsel, with whom the customs authorities may communicate each time suspect goods are found, together with a power of attorney duly executed in this regard.   

 It is also now required to provide updated information regarding in particular:  

  •  good details (including the customs value and the French / EU market value of said goods),
  • goods distinctive features,
  • place of production,
  • involved companies (which means "the importers, suppliers, carriers, addressees, or exporters"),
  • traders (which means "the entities authorized to commercialize said products by the IP right holder"),  

If the number of products is too high, it is possible to focus on a limited number of products (notably in view of previous counterfeit goods) in order to maintain the watch customs application in force. 

Finally, it is recommended to provide the following elements:  

  • goods clearance details and distribution information,
  • packaging,
  • accompanying documents.  

It is highly recommended that clients provide the French customs authorities with the following:  

  • A document / website enabling the French customs authorities to distinguish counterfeit products from genuine products (updated on a regular basis) including the above mentioned required information,
  • Samples of genuine products,
  • Any information on specific infringements, 
  • A list of importers, suppliers, carriers, addressees, or exporters, as well as a list of entities authorized to commercialize said products by the IP right holder,
  • A list of locations of production of genuine products,
  • Any devices to inspect the goods (particularly for electronic goods). 

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

As mentioned above, the details of the IP rights holder's local representative, such as its French in-house or outside counsel, with whom the customs authorities may communicate each time suspect goods are found, should be provided to the French Customs authorities, together with a power of attorney duly executed.


-If filing on behalf of a subsidiary of the IP rights holder what evidence of connection to the parent company is required?

According to French law, the filing of a French customs watch application on behalf of a subsidiary of the IP rights holder is possible if such subsidiary is an authorised user of the IP rights.

Any document (together with its French translation) showing this status, such as a license agreement executed by both parties or a statement signed by the IP rights holder, should be accepted by the French customs authorities.


-Are there any fees or local procedural requirements?

The French Customs authorities are duly authorised to disclose the quantity of the suspect goods. However, they are not authorised to disclose the names and details of the importer, the holder or the exporter of the goods retained unless the IP rights holder undertakes to launch a civil or a criminal action before the French courts. This is due to the specific confidentiality obligation provided by the French Customs Code.

The filing of a French customs watch application is free of charge.

As mentioned above, the rights holder has to agree to cover the costs resulting from the storage and destruction of the counterfeit goods seized by French customs authorities.

However, we are not aware of any case where French customs have actually required the rights holder to refund such costs. It should happen only when very large or heavy goods are involved.


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

A customs watch program in France can be implemented at any time. The French customs authorities quickly confirm whether the application has been accepted.

In principle customs protection will last for 12 months before renewal is required.


-What level of understanding of IP rights is available from customs? Are additional procedures or training required?

French customs authorities have a very good understanding of IP rights issues, in particular regarding trademarks and registered designs. Moreover, French customs authorities are always happy to meet with the rights holder's representatives to have training sessions. The latter can be organised throughout the French territory.


-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?

Following receipt of notification from the customs authorities of the seizure of counterfeit goods, the rights holder's representative has a period of 10 working days to confirm whether the goods are genuine or counterfeit. This may be renewed for an additional 10 days when the retention is initiated on the basis of the EU Regulation.

If the inspection of the goods reveals that they are counterfeit, the customs authorities will request that the rights holder's representative indicates:

  • The reasons leading him/her to believe why the goods are counterfeit
  • Whether the rights holder intends to bring a civil or criminal action on their own
  • The unit selling price in France of genuine goods, which enables the customs authorities to assess a proportional fine payable by the infringing party.

In the absence of a response within the 10-day period, the customs authorities end their retention and release the suspect goods.

Once the rights holder's representative has confirmed that the goods retained are not genuine and has provided the above information, the French customs authorities usually seize and destroy the goods at their own initiative at the expiry of the 10-day retention period. Of course, the rights holder still has the option to bring a criminal or civil action on their own, if they so wish.

The French customs authorities also inform the Public Prosecutor who may decide to initiate criminal proceedings against the involved parties or to request from the police or customs authorities that they conduct additional investigations. In the event of the initiation of criminal proceedings, the rights holder will have the option to join the criminal proceedings initiated by the Public Prosecutor if they so wish.