The application under German legislation
When is it useful to file an application under national legislation?
Most seizures follow the procedural rules of EU Regulation (EU) No 608/2013 because it takes precedence over national legislation.
If one of the following situations applies it is useful to file an application under national legislation:
- The infringements probably occur during the movement of goods between the Member States of the European Union (intra-Community movement of goods).
- The goods are authentic products that have been labelled or licensed with your consent, but are intended to be imported or exported without the consent of the right-holder, thus circumventing the contractually specified distribution channels (what is known as parallel or grey imports).
Entitlement to file an application
Not just every right-holder but any person authorised to use and/or exercise these rights is entitled to submit an application for action.
Of course, the right-holder or the beneficial owner can appoint an agent and/or representative to submit the application.
Registration on the Customs Portal
The request for seizure is recorded on the internet through the ZGR-online database (the Central Database System for the Protection of Intellectual Property Rights online). Access to this is via the Customs Portal.
LOGIN: Customs Portal
Information on the online database: ZGR-online
Filing the application
The application for action by customs must be submitted electronically through ZGR-online (Zentrales Datenbanksystem zum Schutz Geistiger EigentumsRechte online), the new online centralised database for the protection of intellectual property rights. To do so you must complete a one-time user registration process.
You will be led through the application with user-specific data entry windows. Detailed questions will elicit the information needed to file the application. A hints tool built into the user interface will help you enter your data. You will also be able to access and use a comprehensive user manual. Once registered on the Customs Portal and using the ELSTER organisation certificate, applications for the border seizure procedure are submitted electronically (without paper copies) to the ZGR office (Central Office for the Protection of Industrial Property). All application contents are transmitted to the ZGR office in encrypted form.
Request for extension and/or amendment
Once you have entered all the details of your application during the initial filing, you may access this dataset for further amendments at any time.
Submitting an ordinary request for extension can thus be done by a single mouse click.
If you want to make changes to your application, such as including another property right or modifying the range of goods under a property right already covered by the application, you will have all the previously entered details available for your amended application; you only need to make the appropriatechanges.
Why must both the original application and the request for extension/amendment be printed on paper and signed?
Because the customs administration is not yet able to process eligible digital signatures, we have not reached the point where we can do completely without paper. This is why, once you have entered your data, the system will generate the application form which must then be printed out, properly signed, and returned to the competent granting authority. At the same time, all the application details will be automatically transmitted, securely encrypted, to the granting authority.
Revising the information indicating an infringement
No paper is needed to revise the information that enables customs to detect infringements. Through the ZGR-online system you may directly access this information at any time to check which details have been provided to customs, to enter any new information, and to update or amend it where necessary.
Documents required for submitting an application
You must make the following documents available to the Central bureau of intellectual property rights (ZGR) when you submit your initial application:
Proof of entitlement
If your application concerns copyrights, unregistered trade marks or unregistered Community designs, suitable documents shall be provided to prove entitlement to submit such application.
There is no requirement to provide register excerpts or similar documents for any other intellectual property rights.
Beneficial ownership
Where the applicant is not himself the right-holder but only the person or entity authorised to use such intellectual property right, he is required to provide a formal authorisation from the right-holder in order to prove his/her entitlement to exercise claims which are derived from the right that has been infringed.
Normally, presenting the relevant contracts satisfies this requirement. It may also suffice to submit a separate, informal authorisation from the right-holder.
Deposit of a security
The application procedure under national legislation requires the deposit of a security. It must take the form of a directly enforceable bank guarantee using the industrial property rights guarantee document (form 0134).
When depositing this security in the form of a guarantee it must be borne in mind that the required size of the guarantee depends on, among other things,
- the property right concerned; for example, the risk that the claim to a certain right will turn out to be unjustified is higher where copyrights are concerned than it is in connection with trade mark claims,
- the likely size of the expected consignments of infringing goods.
Form 0134 (in German)
The security could cover a possible claim for damages by the importer against the applicant (right-holder) should it later turn out that the items were not counterfeit, or if it had not been possible to proceed with the seizure procedure properly for reasons that were the responsibility of the right-holder.
However, it can also be used to cover expenses (such as storage charges, the cost of transporting the goods to the storage site, or destruction charges) that arise in the course of the seizure procedure, and that must be borne by the right-holder (pursuant to Article 9(1) and (2) of the Customs Costs Ordinance (Zollkostenverordnung), Article 10(1) of the Administrative Expenses Act (Verwaltungskostengesetz)) if the right-holder has defaulted on payment obligations arising in the course of the procedure.
Hitherto the securities deposited range from 10,000 euros to 25,000 euros.
Power of attorney
If the application is being filed by an agent/representative (such as a lawyer), it must be accompanied by the original applicant’s valid power of attorney.
Scope of protection of the application
By your selection of intellectual property rights and of the range of goods to be monitored you also decide in which cases customs officials shall perform seizures because of your application. You decide which property rights shall be included.
Prior to filing your application you should therefore determine which goods or property rights are affected by infringements. It is only these that you should include in your initial application so that the customs authority can make targeted checks. An excessively broad scope is confusing and unclear, reducing the chances of the action you have applied for.
Information to help detect infringements
As part of your application you must provide the Customs administration with such information about your goods as will enable any customs official to distinguish a suspicious consignment from an unobjectionable one. Such information forms the core part of your application. The more comprehensive and up-to-date the information about the authentic goods is, the greater the likelihood that the customs authorities will be able to seize infringing products. The success of an application always depends on the quality of the information supplied. After all, it is you who enables the customs officials to pick out certain consignments and detect infringements.
Please note that sufficient data about the authentic goods is a requirement for the granting of an application.
Information about the authentic goods
It is through an exact description of the authentic goods that the counterfeit often reveals itself.
You should, therefore collect information about the authentic products. Hold meetings of your company’s competent employees with responsibilities in the product development, purchasing, marketing, sales, and legal departments (employees who are responsible for the registration and assertion of your property rights). Each can contribute information from his own area, so that finally you have a collection of all the important information.
You and your employees should provide a joint description of the typical features of an authentic item (for example, the packaging, leaflets included in the packaging, guarantee certificate, instructions, and labels) or provide information about special security features (for example, security threads or holograms); you should also include images of current examples as well as style guides or character guides.
The customs officials on site are mainly occupied with invoice, freight and other commercial documents, crates and containers during clearance. The inspection of documents and registration data is therefore very important, which is why you should supply us with information relating to the specific delivery and everybody involved in it. Above all, you should try to answer the following questions:
- Are the authentic goods cleared only at certain customs offices, and if so, which?
- Are the authentic goods cleared using only a single procedure (for example, the local clearance procedure), or by a specific customs procedure (e.g. storage in a customs warehouse)?
- Are the authentic goods imported, exported, or brought to the market through a particular distribution system (for example, only through a general agency or hauliers)? Are specific modes of transport (air freight, sea freight, road haulage, dispatch by post) used ?
- Are your goods specially packed, does the packaging have a special shape, is it marked in some special way?
- Are outside firms authorised to trade with brand products or how do licensees show that they are legitimate? Think about your company’s system and ask yourself whether everybody who is permitted to trade with your goods should have a written authorisation.
ZGR-online will assist you in structuring the information you have collected. You should fill the relevant boxes (for example, delivery details) under the heading "Information about authentic goods" so that the information you have can be made available in a structured form.
Information about infringements
Look for clues, and follow clues that may at first seem unimportant. Do not just take note of what you hear from your customers about infringing (frequently cheaper) competitive products, but question them. Make your employees in the sales department more aware of counterfeiting. You are often the first who hears about cheap copies of your goods from local and global customers.
If the hunt for clues has been successful, you may know the names and addresses of the companies and persons who appear as producers, sales organisations, intermediaries, carriers, importers, recipients or exporters of infringing products. Enter this important information in ZGR-online under the heading "Information about infringement". Images of counterfeits are not absolutely necessary at this point, as they often only depict an individual case and do not claim to be complete. However, images can be helpful, for example a forger is very persistend or harmful tou you and this should be highlighted in the application.
Application processing fee
There is no charge for processing an application for the border seizures of goods.
Period of validity of an application
Applications for seizure can only be approved for a maximum of one year. After that, it is easy for you to extend the validity of an approval for one further year as often as you wish, via ZGR-online. To ensure that the approval is uninterrupted, you should submit your request for extension not later than 30 days prior to the current application’s date of expiry.
