Product and brand piracy, also known as counterfeiting, are a serious problem for innovative companies exhibiting and selling in the EU. To protect your revenues on the European market and to shield your business against counterfeiting, you should consider applying for customs seizures. They are a proven method to get a hold of these people who steal your ideas and use them to make business in the EU and in Germany. Now let us give you the answers to some really important questions around border seizures to make sure you can better protect your products and ideas.
1. What Exactly Are Customs Seizures?
Customs seizures are a method to fight patent, trademark and design infringing products at an early stage. This method is applicable when IP-infringing products from non-EU countries shall be imported into the EU and the owner wants to sell them or exhibit them at the fair. At the borders European, respectively German customs take action and retain goods which they suspect of infringing registered IP rights. Then they tell the rights holder about the discovery and define a certain time period in which your company can take action against the potential product or brand pirates.
Customs seizures also apply for products which are meant for export or reimportation into the EU or to Germany.
2. How Are Customs Seizures Carried Out?
During an inspection customs pick up suspicious goods. Then the rights holder
- is notified by customs that suspicious goods have been retained. He is also informed about the defined period in which he / she has to take all further actions
- can inspect and check the goods for infringements
- tells customs if the retained goods really are infringing any of his registered IP rights and if he is interested in any follow-up to the discovery
- can, at the same time, apply for the destruction of the IP-infringing goods
The goods? owner has to agree to the destruction within the defined period of time. If he disagrees, legal steps follow. If the owner doesn?t make any clear objection, the goods will be destroyed as if he had agreed.
Hint: Don’t forget to apply for some samples to be sent to you after the discovery so your company can check properly for possible infringements. But unfortunately you can?t request samples if the affected IP is not a trademark, a copyright, a design or a geographical indication.
3. Are there Any Relevant Preconditions? And How Can I Apply?
German custom authorities can only seize goods if you as the rights holder apply for it. The application has to be submitted online via https://www.zgr-online.zoll.de (Zentralstelle Gewerblicher Rechtsschutz in Germany).
European customs can basically take action on spec without an actual application having been filed. But nonetheless the application has to be filed subsequently within a certain amount of time customs will tell you. Until you have filed your application goods will only be retained ? An actual seizure is only possible afterwards.
Under exceptional circumstances even German customs can take action without an application. But as with European customs a subsequent application still has to be filed.
Provide the following information with your application at any rate:
- The name and number, respectively the certificate of your registered IP right you as the rights holder are referring to
- Detailed information about distinctive features of your original products, so that customs can react efficiently because they know what exactly they have to look for
- Information about significant features of potentially infringing products
Hint: There are some additional constituents which you can add to your application. For example you can let customs report further information about the owner, provider and distribution of the goods. These additional constituents help make customs seizures more sustainable and rewarding.
4. Are there Any Special Things I Might Miss?
Not all customs authorities are created equal. There are some important limitations to their responsibilities, depending on the way in which suspicious goods infringe your IP. Have a look at these details which might become essential for your own procedure:
- Can customs retain goods because they suspect them of infringing my IP?
- Can every customs office take action for every kind of IP?
- I have allowed the use of my IP, but I have not agreed to importing these goods into the EU!
These so called parallel imports (sometimes also referred to as grey imports) cannot be retained by EU customs. In this case German customs have to take action.
Block Product and Brand Pirates Before They Make Business with Your Ideas
Customs seizures are a proven method to prevent the import of patent, brand or design infringing products into the EU or to Germany. But still this isn?t the only way to fight brand and product pirates. A smart and sustainable IP strategy will protect your IP at an even earlier stage, whereas a border seizure can only serve as ?first aid?.