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Custom seizures

Since 2003 the European Union has introduced a unified instrument, applicable both throughout the territory and to one or more territories of the member States, in order to prevent counterfeit copies of protected goods from entering into the common market. This instrument allows to intercept the counterfeit goods at Customs before they create commercial damage. It does not exist only in the European Union, as similar procedures exist in the US and China too. In 2014, European legislation extended the intellectual property rights for which it is possible to request the Customs Authorities to intervene.

The Regulation does not contain any indication of the criteria that have to be adopted to ascertain an infringement of the intellectual property right activated. Consequently, once the goods have been detained, it is the party affected by the confiscation that has to start the legal actions that he deems most appropriate, if he believes that the right activated is not valid, or if there is no counterfeiting, or if there is bad faith involved, since the assumption of validity and inversion of the burden of proof are admitted. Activating this procedure does not prejudice the possibility, for the owner of the right, or his successor in title, to take penal action. Therefore, a penal or civil action remain procedures that can be started in parallel and independently.

The intervention of the customs authorities concerns goods in the following situations:

  1. goods declared for release for free circulation, export or re-export;
  2. goods entering or leaving the customs territory of the Union;
  3. goods placed under a suspensive procedure or in a free zone or free warehouse.

In particular, it includes:

  1. "counterfeit goods":
    1. goods bearing a trade mark identical to a validly registered trade mark for the same goods and/or services, or which cannot be distinguished in its essential aspects and which therefore is able to cause confusion;
    2. goods which infringe a geographical indication in the member State where they are found and which bear a name or term that is protected in respect of said geographical indication;
    3. any packaging, label, sticker, brochure, operating instructions, warranty document or other similar item, even if presented separately, which is the subject of an act infringing a trade mark or a geographical indication, which includes a sign, name or term which is identical to a validly registered trade mark or protected geographical indication, or which cannot be distinguished in its essential aspects from such a trade mark or geographical indication, and which can be used for the same type of goods as that for which the trade mark or geographical indication has been registered;
  2. "pirated goods": goods which infringe a copyright or related right or a design or model in the member State where the goods are found and which are, or contain copies, made without the consent of the holder of a copyright or related right or a design or model, or of a person authorised by that holder in the country of production;
  3. "goods suspected of infringing an intellectual property right": goods with regard to which there are reasonable indications that, in the member State where those goods are found, they are prima facie:
    1. goods which are the subject of an act infringing an intellectual property right in that member State;
    2. devices, products or components which are primarily designed, produced or adapted for the purpose of enabling or facilitating the circumvention of any technology, device or component that, in the normal course of its operation, prevents or restricts acts in respect of works which are not authorised by the holder of any copyright or any right related to copyright and which relate to an act infringing those rights in that member State;
    3. any mould or matrix which is specifically designed or adapted for the manufacture of goods infringing an intellectual property right, if such moulds or matrices relate to an act infringing an intellectual property right in that member State;
  4. "perishable goods": goods considered by customs authorities to deteriorate by being kept for up to 20 days from the date of their suspension of release or detention.
  5. "small consignment": goods which are forwarded by a postal or express courier consignment, which contains at most three units, or has a gross weight of less than two kilograms. 'Units' means the package if packed, and if not packed reference must be made to the Council Regulation (EEC) No 2658/87 of 23 July 1987.

The rights that can be acted upon are as follows:

  1. the trademark, provided it is registered, provided it is a Community, International or National trade mark;
  2. the Community or International or National design or model;
  3. a copyright;
  4. a designation of origin, or geographical designation, or designation of origin protected:
  5. the patent of industrial invention, both Community (when it comes into effect) and also national;
  6. a patent for a utility model;
  7. a supplementary protection certificate for medicinal products, or for plant protection products;
  8. a Community or national right for plant varieties;
  9. a topography of semiconductor product;
  10. a trade name.
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