Action pursuant to Regulation (EU) No 608/2013
What does the procedure entail?
Only where the custom’s Central bureau of intellectual property rights (ZGR) has granted an application (decision) action pursuant to the Regulation can be taken. Moreover, the Regulation only applies where non-Community goods under customs supervision or in a free zone are concerned, which are, or should have been, under customs control.
Application for action
What sort of actions do the customs take?
If the customs authorities have identified goods which are suspected of infringing an intellectual property right (trade mark, copyright, design, patent, supplementary protection certificates, plant variety right, geographical indications, semiconductor topography, utility model, or a trade name) which is the subject of an application that has been granted, they will suspend release of the goods or detain them. A suspension of release (Aussetzung der Überlassung - AdÜ) will be pronounced if a customs declaration has been accepted. In all other cases the goods will be detained (Zurückhaltung von Waren - ZvW). Both actions have the same legal consequences.
What information do the customs send?
The declarant or the owner of the goods as well as the holder of the decision will be informed of the suspension of release and/or the detention within one working day. At the same time the holder of the decision will be informed of the quantity and nature of the detained goods and be sent available images, if appropriate.
In addition to the information mentioned above, the right-holder can submit a request that he be sent other information, viz. the name and address of the consignor, the declarant or owner of the goods, the customs procedure, the origin, the source, and the destination of the goods.
The transmission of this information obliges the right-holder to implement the subsequent steps of the procedure, and to observe the obligations associated with it. If the right-holder fails to do so, and the goods are consequently released, the Central bureau of intellectual property rights may suspend the validity of the application for action and/or revoke the decision, and refuse any further extension of the application.
Can samples be sent?
The holder of the decision can apply to the customs authorities to provide him with or send him samples solely for the purposes of analysis and in order to facilitate the rest of the procedure. This is only possible if the intellectual property right concerned is a trade mark, a copyright, a design, or a geographical indication. Samples cannot be sent where other intellectual property rights are concerned.
In Germany requests for the transmission of information and the provision of samples can already be made at the time of submitting an application with the Central bureau of intellectual property rights (ZGR). They can also be submitted, at any time, with regard to applications that have already been granted.
You can download all the necessary forms for these requests, as for everything else, from the ZGR-online system.
What happens following detention by the customs?
The goods will be destroyed under customs supervision within ten working days or, in the case of perishable goods, within three working days of the notification of the suspension of release or detention if the following conditions apply:
The holder of the decision
- has confirmed in writing that he believes that the goods infringe an intellectual property right, and
- has declared to the customs authorities in writing that he consents to their destruction.
The declarant/owner of the goods
- has agreed to their destruction in writing. His agreement is deemed to have been given if he does not expressly object either verbally or in writing to the destruction within ten working days of notification (fiction of consent).
The period of ten working days can be extended for a maximum of ten additional working days by the competent customs authority following a substantiated written request for the specific case by the holder of the decision. No extension is possible for perishable goods.
As a matter of principle, no extension will be granted for delays which are the responsibility of the holder of the decision (e.g. lengthy despatch of samples abroad, absence of a competent holiday replacement for the contact person, or other organisational shortcomings).
The goods are always destroyed at the end of the procedure. There is not any provision for an agreement between the holder of the decision and the declarant or owner of the goods to obtain the release of the goods.
What happens when an objection to the destruction is raised?
If the declarant or the owner of the goods objects to the destruction, or if it cannot be assumed that he agrees to the destruction, the customs authorities will promptly inform the holder of the decision of that fact.
The holder of the decision must then initiate civil proceedings to determine that there has been an infringement of an intellectual property right within the period (that has already commenced) of ten working days, and supply the customs authorities with proof that he has done so. If he fails to do so, the goods shall be released.
If you do not initiate proceedings without valid reason, the ZGR may suspend the actions of the customs authorities (pursuant to the first sentence (d) of Article 16(2) of Regulation (EU) No. 608/2013.
If civil proceedings have been initiated in due time and the fact appropriately demonstrated to the customs authorities, the goods will be detained under customs supervision until a final judgement has been delivered. Depending on the outcome of the case the goods will be either destroyed under customs supervision or released.
Who is liable?
The right holder shall reimburse the customs authorities the costs of the procedure starting from the suspension of release and/or the detention of the goods (e.g. charges for warehousing, destruction, management of the goods by the customs or authorised individuals).
