The new EU Counterfeit Goods Regulation has taken effect as of 1 January 2014. As reported in our previous articles (see here and here), the Regulation modernises and streamlines the current system for dealing with counterfeit goods. Enforcement action can now be taken by customs authorities in respect of a wider range of goods and IP rights than those currently captured such as trade names, semiconductor topographies and utility models.

Of particular interest is the new small consignment procedure which, if the relevant rights-holder decides to opt-in, allows the customs authorities to destroy small consignments of counterfeit or pirated non-perishable goods, thus avoiding the need for a formalised process. The costs involved in the destruction are to be borne by the rights-holders. The procedure covers postal or express courier consignments containing three units or less or with a gross weight of less than two kilograms.

The new Regulation also gives EU customs authorities the power to share information with non-EU third countries in relation to goods in transit. However, it is still the case that goods in transit that are destined for a non-EU third country cannot be seized even if they infringe rights in the country in which they have been detained unless there is a “substantial likelihood” that they will be diverted from their transit into the EU market.

The process and procedure involved in applying for and renewing customs applications has also been updated to reflect the changes introduced by the new Regulation. This means additional work for rights holders and practitioners in 2014 as full applications need to be submitted in the first year of the Regulation. Thereafter, less detailed renewal forms may be used.

Contributed by Brian McElligott.

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