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 - Poland

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-Are there any fees or local procedural requirements?

The application process is free of charge. No form of bond or security is required.

After the application process, the applicant may incur costs resulting from proceedings regarding seized counterfeit goods. 

-How do you register a customs watch application?

The application needs to be filed with the Customs Chamber in Warsaw. The application needs to be in Polish and on an official form. Unfortunately, the application may not be filed electronically, however, as the Polish customs use an internal IT system in which they store all the information provided by the applicant it is recommended that applicants also file the documents referred  to below, by electronic means to help speed up the processing.

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

Once the application is filed the customs office has 30 working days to reply. The period for which customs authorities may grant the customs watch is in principle one year. This period may be renewed for consecutive one year periods by filing a relevant motion at least 30 working days before expiry of each one year term.

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

Evidence of connection is not required, however, it must be demonstrated that the subsidiary, either has a right to use the IP rights of the rights holder (licenses etc.), or that it is authorised to act as a rights holder's proxy.

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

According to Polish law a technical and administrative contact (it may be one person) has to be selected.

A power of attorney is necessary only in case of civil or criminal litigation and legal proceedings before customs authorities (as described below).

-What documentation is required or recommended?

The application should contain:

  • Evidence of the relevant IP rights (e.g. certificates of protection for registered IP rights or copies of relevant agreements, affidavits in case of unregistered rights)
  • Declaration in which the applicant accepts potential liability towards the importer in the event that the goods in question are subsequently found not to infringe intellectual property rights or that the initiated procedure will not be completed. Moreover, in that declaration the applicant agrees to bear all costs of destruction and storing goods under customs control.

The applicant also needs to provide as much information about the genuine product as well as counterfeit products as they can. This, apart from a technical description of the product, includes information such as:

  • Location of production
  • All parties involved in the transport and distribution process (authorised manufactures, distributors, importers, carriers, consignees etc.)
  • Specific channels of distribution
  • Customs and market value of the genuine goods
  • Their packaging (also accompanying documents, labels, holograms etc.)
  • Any other special features.

Apart from the information referred to above, it should be stressed that Polish legal procedure is very formal  and, therefore, most documents filed with the authorities must be in a paper form and have all the appropriate signatures and stamps, etc.

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

The level of understanding of IP rights of Polish customs officials is reasonable, however, it tends to differ depending on the customs office (the highest level of understanding is presented by customs officials responsible for the main transport routes in Poland). Nevertheless, we recommend conducting additional training as these are appreciated by customs officials and will raise their awareness about the company and its brands.

-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?

Once an application is in place, the customs authorities will report on all goods which, in their opinion, infringe the rights holder’s rights. The rights holder has 10 working days from the receipt of the customs authorities notification to present the appropriate documents confirming that proceedings towards establishing a potential infringement of IP rights have been initiated. This term may be extended only once for an additional 10 working days (the Polish customs authorities almost always grant such extensions).  Within this term the rights holder has to initiate civil or criminal proceedings against the importer.

In addition, on the basis of EU law, Poland has introduced a simplified procedure. This procedure allows the rights holder to abandon the goods for destruction on the basis of the importer's consent and without the need for initiating court proceedings. The rights holder has to file an appropriate motion with customs authorities within the same deadline as mentioned above. If the motion is successful, the rights holder may proceed with destruction under the supervision of customs authorities and at his own cost.