(by Francesca Maculan)

On 29 June, Regulation (EU) no. 608/2013 concerning customs enforcement of intellectual property rights and repealing previous Regulation EC no. 1383/2003 (the “Regulation”) was published on the Official Journal of the European Union. We summarize below the main changes made to the legislation in issue which, as it is known, concerns the detention by the customs  authorities of goods suspected of infringing intellectual property rights.

Firstly, the Regulation extends customs intervention to rights which were not protected yet, such as  trade names, topographies of semiconductor products, utility models and devices which are designed for the purpose of enabling or facilitating the circumvention of technological measures.

In addition, pursuant to Article 23 of the new Regulation, the so called “simplified procedure” for the destruction of infringing goods – the adoption of which was voluntary until now – has become mandatory in all Member States. According to it, the customs authorities are always entitled to destroy goods suspected of infringing an intellectual property right, without there being any need to ascertain whether an infringement actually exists, if they receive the following written communications within 10 working days of notification of the detention of the same goods (3 days in the case of perishable goods): i) the applicant for customs action shall confirm that, in his conviction, an intellectual property right has been infringed and shall confirm his agreement to the destruction of the infringing goods; ii) the holder of the infringing goods (i.e. the person who makes the customs declaration) shall confirm his agreement to the destruction. If the latter remains silent, the customs authorities may infer that he/she agrees to proceed.

In case the holder of an application for customs action do not send the communication sub i) within the relevant deadline, the customs authorities shall grant the release of the goods unless they have been informed about the initiation of legal proceedings to determine whether an intellectual property right has been infringed. On the other hand, if the holder of the goods does not give confirmation sub ii) within the relevant deadline and the customs authorities do not assess this silence as a confirmation to proceed, the same authorities shall immediately notify the holder of the application for action thereof. Within the same 10 (3) days, the applicant shall initiate proceedings to determine whether an intellectual property right has been infringed, notifying the customs authorities thereof; otherwise, the same customs authorities will grant the release of the suspected goods.

The Regulation also introduces a new specific procedure for the destruction of counterfeit goods in small postal or express courier consignments (Article 26). Such procedure is to be adopted for each detention by the customs authorities, provided that the concerned applicant has requested to use it in its application for action (Article 26 Section (d)). In this case, within one working day of the detention, the customs authorities shall notify the holder of the infringing goods / the declarant of their intention to destroy the goods. The latter can express his point of view within 10 days, confirming or not his agreement to the destruction. If no agreement nor opposition to the destruction are expressed, the customs authorities may deem in any case the declarant / the holder of the goods to have confirmed his agreement to the destruction of the goods and proceed to that effect; otherwise, they immediately address to the holder of the application for action, informing him of the name and address of the consignee, the consignor and the declarant / holder of the goods, as well as of the customs procedure, the origin, provenance and destination of the detained goods. Within 10 days of such communication, where the holder of the application for action has not given information to the customs authorities on the initiation of proceedings to determine whether an intellectual property right has been infringed, the same authorities are entitled to release the goods.

Finally, pursuant to Article 29 of the Regulation, customs supervision and destruction costs shall be paid by the holder of the application for action where requested by the customs authorities, without prejudice in any case to the right of the person concerned to seek compensation from the infringer.

The abovementioned provisions shall enter into force as a whole starting from 1 January 2014. From now until then Regulation no. 1383/2003 shall continue to apply. However, the provisions of the Regulation entailing the adoption by the European Commission of implementing acts (e.g. for establishing new application or extension forms) entered into force on 19 July 2013.

The Regulation does not face the problem of counterfeit goods which are merely in transit through the territory of the EU to extra-EU Countries: as regards this issue, following ECJ decision on joint cases C-446/09 and C-495/09, a provision was expected to expressly extend the measures of the Regulation also to these goods, but was finally not included in the new legislative text.