In our ongoing series, our focus shifts to Spain, delving into the intricacies of brand protection challenges and optimal solutions at the nation's borders and entry points.
Elzaburu head of anti-counterfeiting Juan José Caselles shares insights into fostering effective collaboration with customs officials at Spanish border points and ports. Below, he offers a comprehensive guide on successfully monitoring and enforcing measures against counterfeit and grey market goods within the market.
Can rights holders record trademark and brand-related IP information with customs and, if so, how?
In Spain, as in the whole EU, Regulation (EU) 608/2013 on customs measures for the protection of IP rights applies. The application for customs action (AFA) is filed with the Customs and Excise Department, Agencia Tributaria, following the form contained in the aforementioned EU Regulation. It can be submitted online by electronic signature. In such request, you can select all or only some of the EU countries in which customs protection is requested and designate representatives in each country for notification purposes. Currently, no administrative fees are required. The applicant for customs action in the initial State may make any changes to the application by updating the information.
As well as trademark registrations, are copyright registrations able to be registered with Customs?
The last amendment of Regulation (EU) 608/2013 includes the protection of all IP rights: including trademarks, copyrights, patents, designs, geographical indications, plant varieties. The only difference between all these IP rights is the different way of proving their existence or registration, being valid any reliable means of the right invoked. In addition, the right invoked must have EU scope. If it is a right with only national scope, the AFA will have to be requested with scope to the States in which it is valid.
Can brand owners send customs officials a product information guide or any additional materials to assist them in identifying genuine products?
The more information provided to customs authorities, the more effective the surveillance will be. Information required in the application form includes: specific and technical data on the authentic goods, including markings such as bar-coding and images where appropriate; the information needed to enable the customs authorities to readily identify the goods in question; Juan José Caselles XNUMX December XNUMX information relevant to the customs authorities’ analysis and assessment of the risk of infringement of the intellectual property right or the intellectual property rights concerned, such as the authorised distributors. At least in Spain, the AFA and all information provided must be in digital format. In this way all customs officials have access to the same information and can communicate with the authorities of the other EU countries.
What is the typical process for confiscation or further investigation in the event that customs officials identify potentially counterfeit goods?
Customs officers analyse the cargo documentation and assess the risks from different perspectives, including country of origin, route followed, declared value of the goods, and the importer. If they need more information, they request it from the declarant of the shipment. When customs officials detect a suspicious shipment, the shipment is detained.
How will brand owners typically be contacted when suspicious or counterfeit goods are identified?
At the moment the cargo is officially detained, the holder of the border protection measures is notified and given 10 days to inspect the products. These actions may consist of requesting the destruction of these counterfeit products and, in the event of opposition by the importer to the destruction, bringing civil or criminal legal action within the same 10-day period. If these actions are not exercised within the time limit, the shipment will be released.
Are there any time-sensitive considerations that brand owners should be aware of when dealing with customs-related IP enforcement?
All actions must be carried out within the aforementioned 10-day period. Although an extension may be requested, its granting is not regulated, so it will be at the discretion of each customs office. It is therefore advisable to adhere to the initial XNUMX-day period. As this is a short period, it obliges IP right holders to act as quickly as possible in the event of a detention.
What are the potential costs involved in working with customs officials to protect a brand's intellectual property?
The holder of the customs intervention has to bear the costs arising from the detention, such as the costs of storage and destruction of the detained goods. In addition, also with translations into some EU languages. Currently, there are no fees to be paid to the customs administration. This absence of fees was a practice followed by the Spanish customs that was eventually extended to the rest of the EU. It is critical to proceed with destruction as soon as possible in order to save deposit costs.
Can you provide examples of successful collaborations between international companies and customs authorities that have resulted in tangible results?
It is relevant to highlight the EMPACT Operation Fake Star, as well as other joint international EMPACT operations. To this end, the private sector used the "alert and interesting cases functionalities” of IPEP to share information of interest with the different enforcement authorities, while enforcement authorities were able to request data from the private sector by sending ”suspicious cases”.
On the other hand, the European Commission just published the resultsof customs retentions in the EU 2022. For both the number of items detained and the estimated value, the top six Member States accounted for almost 97 % of total detentions in the internal market in 2022. Italy leads the ranking with over 63 % of the total number of detained items, and almost 55 % of the total estimated value. Spain, France, the Netherlands and Hungary also ranked in the top six in both the number of items and the estimated value of detentions, whereas Bulgaria and Greece complete the ranking in terms of number of items detained and estimated value respectively.
What proactive strategies can brand owners employ to enhance their partnership with customs officials?
Close cooperation between customs and right holders, as well as the quality of information provided by right holders in their communications are of utmost importance for risk assessment in the field of IPR protection.
The first step is to apply for customs protection in the EU by appointing a representative to customs in each country with long experience in these matters and who maintains excellent relations with the authorities. In addition, the information provided to customs must be kept up to date. If we have information, as detailed as possible, about the upcoming arrival of a suspicious shipment in Spain or another EU country, we recommend making use of the "red alert" mechanism so that the shipment is physically inspected upon arrival. Another very useful measure is to conduct training sessions for customs officials on how to identify infringement of the rights of companies owning IP. Finally, since the ultimate objective is to trace the place of manufacture of counterfeit products, the customs information obtained must be handled with intelligence, cross-checking data and making inquiries in the country of origin.
Juan José Caselles, Associate Partner at ELZABURU
Originally posted on WTR on December 08, 2023.
