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EU Customs Recordal: How to Record IP Rights in the Customs Register
The problem of counterfeit goods is acute worldwide today. It not only infringes the rights of owners but can also be dangerous for consumers. EXIP continues the discussion of methods of fighting counterfeiting. This time we look at recording IP rights in the customs register, using Slovakia as an example.
Counterfeiting cannot be eradicated worldwide while its economic causes exist. However, within a single country or region, counterfeiting can be fought successfully. Customs registers of IP rights are an effective tool for this. Below we review the procedure for recording IP rights in the customs register, using Slovakia as an example.
There are two types of applications for recording IP rights in the customs register:
- National: filed with the customs authorities of an EU Member State to protect IP rights in that State;
- Union application: filed with the customs authorities of an EU Member State to protect IP rights in that State and in one or more other EU Member States.
Clearly, a Union application is better, because it provides protection in several countries instead of one, at the applicant’s discretion. However, the application must be prepared in the language of the country whose customs authorities it is filed with. For a Union application, the countries where protection applies may require a copy in their own language.
The application is completed in two copies. If the application is filed by a representative, a document confirming the representation must be attached.
However, note the following when filing. Under Article 5(6) of Regulation (EU) No 608/2013, in countries where computer systems for receiving and processing such applications have been set up, applications must be filed electronically.
As for Slovakia, under ยง 13(1) of Act No. 486/2013, documents may be filed either in writing or electronically. However, if filed electronically, the written version must also be submitted within 3 working days. Therefore, it makes sense to file documents in writing only.
Who may file an application:
A national or Union application may be filed by:
- right holders;
- collective management organisations for IP rights;
- professional protection bodies;
- groups within the meaning of Article 3(2) and Article 49(1) of Regulation (EU) No 1151/2012, producer groups within the meaning of Article 118e of Regulation (EC) No 1234/2007, or similar producer groups provided for in EU law on geographical indications, representing producers of geographical indication products or representatives of such groups;
A national application may be filed by:
- persons or organisations competent to use IP rights who have been formally authorised by the right holder to initiate proceedings to determine whether an IP right has been infringed;
- producer groups provided for in the legislation of EU Member States on geographical indications, representatives of producers of geographical indication products or representatives of such groups, and operators entitled to use a geographical indication, as well as inspection bodies or bodies competent for such a geographical indication;
A Union application may be filed by holders of exclusive licences covering the entire territory of two or more Member States, where such licence holders have been formally authorised by the right holder in those Member States to initiate proceedings to determine whether an IP right has been infringed.
No fee is charged to cover the administrative costs of processing the application. However, the applicant, referred to as the decision holder, must reimburse the costs incurred by the customs authorities or other parties acting on their behalf from the moment goods are detained or their release is suspended, including storage and handling costs or the destruction of goods under customs control.
The competent customs department notifies the applicant of its decision to grant or reject the application within 30 working days of receipt.
The validity period is set out in Article 11 of Regulation (EU) No 608/2013 and does not exceed one year from the day following the date the application is granted. To continue it, a renewal application must be filed.
In summary, recording IP rights in customs registers is one of the most effective ways to fight counterfeiting. Such steps are a necessary part of promoting goods and services in the relevant markets. They help protect right holders from damage to their business reputation and from lost revenue from the sale of goods and services.
The material was prepared by Maxim Khomenko, leading lawyer at EXIP on IP audit and IP protection strategy. Contact us for a consultation!
