On 1 January 2014, the European Union Council’s new Regulation (No. 608/2013) (the New Regulation) concerning customs enforcement of intellectual property rights will (largely) come into force.

It will repeal the existing Regulation (No. 1383/2003) (the Existing Regulation) concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights.

Following a call to review the Existing Regulation in September 2008, it was found that certain improvements were required to strengthen the enforcement of intellectual property rights by customs authorities, as well as to ensure appropriate legal certainty.

The key changes adopted in the New Regulation are summarized below:

  • Wider application: The definition of intellectual property right has been broadened, extending the scope of the New Regulation. In addition to covering trade marks, designs, copyright or any related rights, geographical indications, patents, supplementary protection certificates and plant variety rights, it will also cover in certain circumstances, trade names, semiconductor topographies, utility models and devices which are primarily designed, produced or adapted for the purpose of enabling or facilitating the circumvention of technological measures.
  • Destruction procedure to be implemented more widely: Following its success in the Member States where it was used, a procedure established in the Existing Regulation, which may be applied to destroy certain goods without the need to bring infringement proceedings is to be implemented more widely in respect of all infringements of intellectual property rights. The procedure should be applied where the declarant or holder of the goods has agreed to the destruction. Such agreement may be deemed to have been provided where the destruction has not been explicitly opposed within the notice period (10 working days or three working days for perishable goods).
  • New procedure for small consignments: A specific procedure is introduced dealing with small consignments of counterfeit and pirated goods, allowing for those goods to be destroyed without the explicit agreement of the applicant in each case, however a general request by the applicant to use this procedure has to be contained in the application. The declarant or the holder of the goods has 10 working days to oppose or agree to the destruction of the goods and agreement is deemed to be provided where no response has been received within the notice period. The costs incurred by this procedure could be borne by the applicant.

It should be noted that the New Regulation will not apply to parallel imports, overruns or goods of a non-commercial nature contained in travellers’ personal luggage.

  • Official Journal of the European Union, Regulation (EU) No 608/2013 of the European Parliament and of the Counsil of 12 June 2013, concerning customs enforcement of intellectual property rights and repealing Council regulation (EC) No 1383/2003
  • Council regulation (EC) No 1383/2003 of 22 July 2003, concerning customs action against goods suspected of infringing certain intellecutal property ri ghts and the measures to be taken against goods found to have infringed such rights

This legal update was prepared by Inga-Marlene Pietsch(inga.pietsch@nortonrosefulbright.com/ +44 20 7444 2468) of Norton Rose Fulbright’s Intellectual property disputes group in London.