Written by Philippe Van Eeckhout
Customs is without any doubt the most efficient administration in the fight against counterfeiting.
It remains that one should be aware of the interpretation given by the Customs Directorate to the regulations regarding this field.
Since March 23, 2016, the article 9-4 of the REGULATION (EU) 2015/2424 of the European Parliament and the council of 16 December 2015 is entered into force. This section allows again control of goods in transit third /third by Customs services of EU Member States, which had been suspended following the decision Nokia / Philips of December first, 2011.
French Customs can control and retain goods coming from a third country and going to another third country, but under certain conditions:
- Firstly, only goods involving a community trademark can be controlled. It is planned to extend this control over national trademarks and registered designs once the new directive will be transposed into the national system (most probably in 2017/2018).
- Secondly, in case Customs have some doubts regarding the origin of the goods, they have to:
- Contact the declarant or the holder of the goods to ask him if he is able to prove that the proprietor of the EU trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination.
- Contact the right owner in order to ask him to confirm or not the counterfeit character of the retained goods.
Both parties have 10 days to answer Customs.
The right owner still has the possibility to ask for the application of the destruction under the simplified procedure.
However and contrary to the current practice in case of direct importation, the absence of answer from the declarant/holder will not been considered as implicit acceptance to the simplified destruction. Consequently, only an explicit agreement will be taken into account.
In the absence of such an agreement, the simplified destruction cannot occur and the right owner will have to introduce a legal action (civil or penal) within the initial deadline or within an extended delay of 10 days which shall be expressly requested. Failing to such action, the goods will automatically be released.
It is clear that once again the harmonization of customs procedures in Europe is still not a reality. Indeed, the customs administration in two countries, Italy and Greece, has decided to implement a different interpretation from the one given by the French Customs Directorate.
As in France, the customs administration in these both countries is not supposed to give information regarding the origin and destination of the goods, however the owner of the trademark will simply have to provide his or her certificate (s) registration in the destination country in order to apply for the simplified destruction of the goods, which implies that the information on the destination country has indeed been provided to the rights holder. In addition, when applied for an application for action, it will be highly recommended for rights holders to provide a list of countries in which they have rights.
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