This guide was written in October 2009. It is based on UK laws.
An EU Regulation (1383/2003) authorises EU member states' customs authorities, such as HMRC, to detain goods thought to be counterfeit.
The Regulation was implemented into UK law by The Goods Infringing Intellectual Property Rights (Customs) Regulations 2004 and worked well for many years with a procedure that was generally regarded as helpful to rights holders: HMRC would detain suspected counterfeit goods, contact the likely rights holder and the detention continued pending the rights holder's response.
However, HMRC's rules, adopted in June 2009, now mean that HMRC will only detain goods for 10 days unless the rights holder takes court action. If the rights holder fails to take action within 10 days (or a further 10 days if requested), HMRC will release the goods.
If HMRC believes that it has identified infringing products it will detain the goods. HMRC contacts the rights holder and gives it certain information about the nature of the allegedly counterfeit goods. If requested, further information can be given to the rights holder such as the names and addresses of the importer and recipient of the goods and the origin and provenance of goods.
In addition, the rights holder is entitled to inspect the suspect goods. Following the inspection of the goods, the rights holder must advise the relevant customs authority whether or not it is going to commence court proceedings.
Failure to commence court proceedings means that the relevant customs authority will release the goods back to the importer.
The time frame
The company's inspection of the goods must take place within 10 working days of its notification by HMRC that the goods are being held. It is possible to apply for an extension of a further 10 working days.
The period for inspection for perishable goods is three working days, with no possible extensions.
What should rights holders do?
As a matter of course, companies should register their rights with HMRC. The Regulations provide the option for rights holders to file an 'Application for Action by Customs Authorities'. This form can be completed by either the rights holder or its representative.
A variety of rights can be protected in this way, including trade marks, design rights, copyright and patents.
This application should include the contact details of who is to receive notification of detained goods and details of the goods that are protected by the rights.
The application must also contain proof of rights, such as a copy of the registered trade mark certificate.