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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 - United Kingdom

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-How do you register a customs watch application?

If you want Customs action at the UK border there is now a combined form to be used for both EU and national applications (replacing the National Intellectual Property Rights Application which was previously used. The combined form can still be submitted to HM Revenue & Customs ("HMRC") as a competent customs authority regardless of whether the application is for UK only or EU customs action.

If you have not filed an application, HMRC is still able to notify you if it comes across goods in the course of its usual checks which it suspects infringe your rights. Under these circumstances you are able to launch a so-called "ex-officio" action by filing a one-time application for customs action. However, this is not as effective as when customs have been specifically told what to look out for, and more importantly the initial detention period for suspect goods is much shorter (4 working days versus 10 working days if an application is already in place). Moreover, the ex-officio procedure does not apply to perishable goods (for example, foodstuffs), so suspect consignments of perishable goods would not be detained without an application being in place.


-What documentation is required or recommended?

Application forms should be completed in block capitals.

Mandatory information:

To submit an application, the applicant (being the rights holder or its representative) must fulfil two conditions: 

  • Provide a sufficiently accurate description of the goods in the application to make selection and identification by customs possible; and
  • Provide proof that the applicant is one of the following:
    • the holder of the right(s) in question
    • the representative of the rights holder (plus proof of authority to act)
    • the authorised user of the right(s) (plus proof of authority to use)
    • the representative of the authorised user (plus proof of authority to act).

The applicant must also complete the undertakings at Box 29 of the application form.

The new combined form does not require the applicant to provide proof that it holds the relevant registered rights; only the type of rights, registration number, date of registration, expiry date and list of goods which the right covers and in respect of which the application is requesting customs enforcement, need to be provided in Box 11. However, for copyright or other unregistered rights, the applicant will need to provide evidence of authorship which can be annexed to the application form.

The applicant will also need to provide the following information:

  • The name and contact details of the technical expert(s) and legal contact(s) appointed by the applicant
  • In relation to both the authentic goods which the applicant seeks to protect and the suspected infringing goods:
    • a description of the goods, including any distinctive features
    • the place of production of the goods
    • details of any "involved companies", including authorised importers/exporters, suppliers, manufacturers, carriers, consignees and traders of the goods

Non-mandatory (but very useful) information:

Wherever applicable and if known the applicant should also include within the application:

  • Distribution information in relation to both the authentic and the suspected infringing goods
  • Packaging information, e.g. the kind of packages, number of items per package, and any distinctive features of the goods' packaging
  • Any additional information of relevance to the application

The applicant should also provide details on the form, no matter how trivial, of any other intelligence it may have about the trade in the infringing goods in order to help customs intercept such goods.

The application and its attachments must be submitted in 2 copies in one of the languages of the EU which is acceptable to the customs authority of the Member State in which the application is submitted.

 


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

The applicant has to give customs all contact details (name, address, telephone number, fax number, e-mail-address) of a natural person dealing with legal matters and with technical matters.

A single person could be designated as representative for both technical and legal matters, but the person requires expertise in both areas. The individual(s) concerned should be:

  • Readily contactable at short notice
  • Able to speak English
  • Accessible at least Monday to Friday during normal working hours.

It is vital to keep your contact details up to date or the suspect goods may be released.


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

You can file the application in the name of the parent/ subsidiary of the rights holder, but in order to include any trademarks owned in the name of the rights holder, it is necessary to submit certified company documentation proving that the rights holder is a wholly-owned subsidiary of the parent (or the rights holder wholly owns the subsidiary, as appropriate).


-Are there any fees or local procedural requirements?

You will not be charged a fee by customs for new applications, or requests for extensions, but customs reserve the right to pass on to you any costs they incur in storing and destroying goods.

Customs can also, at any time, require a security by cash deposit or guarantee in respect of the notice and the goods to which it relates. Customs will notify you if and when they require security.

When submitting an application the rights holder is required to complete an undertaking within the Application form to pay all costs and liabilities incurred by customs. By way of example, these may include:

  • Storage and other handling charges when customs have correctly detained suspect goods which are subsequently found not to be infringing, or where action is discontinued owing to an act or omission on the part of the rights holder
  • Storage and other handling charges for correctly detained and abandoned goods
  • Legal costs and compensation for any loss suffered if you or the Courts confirm that the goods are not infringing or the action is discontinued
  • Costs incurred in the destruction of the goods.

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

Customs will inform the applicant within 30 working days whether the application has been accepted or rejected. Where customs reject applications or notices they will give you the reasons for the rejection, and will give you the opportunity to amend the application or request that it reconsiders its decision.

In principle, customs protection will last for 12 months before renewal is required. However, this is subject to the caveat that the validity period of an application cannot extend beyond the expiry of the protection period of any intellectual property right on which the application is based.

For applications based on multiple rights, the application period will end on the date that the first protection period expires, if this is less than 12 months from the date of the application being made.

Examples:

  • If an application is filed on 1 January 2013 which is based on a single registered trademark expiring after 31 December 2013, the customs coverage would expire on 31 December 2013. 
  • If an application is filed on 1 January 2013 which is based on a single registered trademark expiring on 1 September 2013, the customs coverage would expire on 1 September 2013 (unless the mark is renewed and customs are notified in time).
  • If an application is filed on 1 January 2013 which is based on two registered trademarks, one expiring on 1 September 2013 and one expiring on 1 September 2014, the customs coverage would expire on 1 September 2013 (subject to renewal of the mark and notification to customs of renewal).
  • You may extend the period of an application by further 12 month periods by applying to customs at least 30 days prior to the expiry date. You should notify customs if you need to change any details on your current application.
    • If customs receive your request to extend the application or amend details after your application has expired you will need to complete and send customs a new application form.

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

HMRC customs officials have a very good understanding of trademark and counterfeit issues. In relation to spotting specific counterfeits, it is always helpful for a rights owner to provide specifications (ie. details of the identifiable features) of your genuine goods and any known counterfeits.

Holding training sessions with customs authorities may also be a very worthwhile exercise. This is particularly the case where applications are based on complex rights, for example patents. Customs officials are not necessarily familiar with specialised technical jargon, and training exercises will assist them in understanding and interpreting a patent or design right specification when looking out for or examining a potential counterfeit product.

Training sessions are also useful in that they allow customs officials to familiarise themselves with your product, and learn how to spot potentially subtle differences between genuine and non-genuine versions of that product.


-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?

Standard procedure

The rights holder will be allowed a "prescribed period" of 10 working days from receipt of the "Detention Notice" from customs, to either:
Initiate legal proceedings to determine whether an intellectual property right has been infringed;

Confirm the abandonment of the goods (by obtaining the consent of the party responsible for the consignment or via the "presumed consent" rule).

Upon request this initial prescribed period can be extended by up to a maximum of a further 10 working days in "appropriate cases" (which is not strictly defined but can include circumstances where the rights holder has sent the consignee a "Consent Letter" (see below) and is waiting for a response).

If you require detention beyond this extended time you must initiate proceedings in Court, and seek the permission of the Court for an extension.

Exception: In the case of perishable goods the prescribed period is no more than 3 working days. This period cannot be extended.

"Simplified Procedure"

A simplified procedure has also been introduced whereby the rights holder and the interested parties may reach an agreement to abandon suspect goods for destruction without it being necessary to initiate Court proceedings to determine whether an intellectual property right has been infringed under national law.

Where the rights holder wishes to extend this offer they should write a "Consent Letter" to the appropriate interested parties (which in practice is usually the consignee) well before the expiry of the initial prescribed period of 10 working days, stating clearly the option to formally abandon the suspect goods for destruction and setting out a reasonable time for such parties to respond to the request.

Seeking abandonment under the Simplified Procedure will normally be deemed an appropriate case to extend the detention period by the maximum further 10 working days.

If an extension of 10 working days is granted, no further extension may be granted, but this does not override the rights holder's right to initiate proceedings at any time during the detention period.

Where agreement to abandon the goods is received, the rights holder should forward this to the customs case officer (usually the person who sent the Detention Notice) along with a statement that the goods infringe your intellectual property rights and request that the goods are treated as abandoned for destruction. Destruction will be carried out at the expense and under the responsibility of the rights holder and will be preceded by the taking of samples for retention by customs in such a condition that they constitute evidence that is admissible, should it be required, in legal proceedings.

Where no response is received from the interested parties, agreement to abandon may be presumed to have been accepted under the "presumed consent" rule, which applies when none of the interested parties has specifically opposed destruction within the reasonable deadline set for a response. The goods will be destroyed by customs accordingly.

Notwithstanding agreement from one of the interested parties, where any one of the interested parties opposes destruction customs may not treat the goods as abandoned. In such a case the rights holder must initiate proceedings within the prescribed period or the goods will be released from customs' control, subject to the satisfactory completion of all customs formalities.

Small consignment procedure

The new combined application form has included an opt-in box for applicants who wish to use the procedure for destruction of suspected infringing goods in small consignments. Ticking this box indicates the applicant's consent to such goods being destroyed without the applicant's explicit agreement being required on each occasion that a suspect small consignment is detained by customs.

Ticking the box also means that the applicant is responsible for bearing the destruction costs of such goods, where requested by the customs authorities.

The procedure does not apply to perishable goods.