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Guillaume Fournier
It is well known that product piracy is on the increase, mainly in the form of fake copies from the Far East. In this regard the European Commission recently published its proposals for new legislation designed to give customs agents the authority to enforce intellectual property rights. The proposal mainly concerns the expansion and continued development of the existing powers of customs agents, thereby underlining the important role played by customs authorities in the war against product piracy.
Most modern jurisdictions already apply regulations that allow customs agents to help combat the import, export and transit of pirate products:
In Switzerland, special provisions in the intellectual property laws in particular empower customs agents to seize shipments on the basis of an application by the owner of the rights, provided that the owner of the rights can substantiate by prima facie evidence that the goods violate his trademark, design, patent or copyrights. This prima facie evidence can, for example, be furnished in the form of an excerpt from the trademark, patent or design register, or a copy of a judgement confirming copyright protection. The customs authorities can make spot checks of the retained goods and send samples to the applicant so that the latter can check whether his rights were violated. The customs authorities can also destroy the retained goods if the importer (or the consignee for goods in transit) does not file an objection. In this way, pirate products can be removed from the market through confiscation by customs, often without the need for expensive court proceedings. It is only when the importer or consignee expressly refuses to consent to the destruction of the goods that the owner of the rights has to apply to a court for preliminary measures, as the customs administration may only hold back goods for a maximum of 20 business days without a court order.
In the EU a similar procedure applies to intellectual property rights protected in the EU, i.e. Community trademarks and Community design patents registered with the European trademark office in Alicante. By force of the registration of such trademarks, a single application can be filed to request help from the customs authorities of all EU member states. Such an application has to be sent to the customs administration of only one member state, who then forwards it to all EU states mentioned in the application. For all other rights that are protected at a national level rather than for the entire EU (national or international trademarks, designs or patents, and copyrights), a separate application addressed to the national customs administration is required for every EU member state.
The customs procedure can also be helpful in countries outside of Europe. In China, for example, customs agents can seize exports of products that violate trademarks in particular, thus stopping fakes at the source. To exploit this opportunity, however, it is important to have intellectual property rights, in particular trademarks (but also designs), registered in China.
Experience has shown that customs authorities, in particular in the EU and Switzerland, are very keen to help the owners of intellectual property rights combat product piracy. In doing so, however, they depend on receiving the best possible information from the owners of rights regarding the distinguishing features of originals and fakes, contact data for the usual importers of pirate products and their sales channels, etc. In practice, active collaboration between the owners of rights or their representatives and customs officers (e.g. by exchanging information or by providing training for customs officers) brings the best results. It is also crucially important to provide as much detail as possible in the application for support from the customs authorities.
