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Inside IP: Arming yourself against counterfeiters

Posted on 11 August 2017 by Cassandra Hill

Arming yourself against counterfeiters

Customs seized 41 million counterfeit goods at EU borders in 2016

Over 41 million counterfeit goods were seized at EU borders in 2016, with a domestic retail value of more than €672 million, according to the European Commission's recent annual Report on EU Customs Enforcement of Intellectual Property. This is a timely reminder to rights holders that registering your IP rights with Customs on either a national or EU basis is a very cost-effective weapon in the anti-counterfeiting armoury, as registration is free.

Rights holders can lodge an "application for action" with Customs which requests that Customs take action in specific EU territories where they suspect that the rights holder's IP rights are being infringed by goods being imported. The Commission has produced a manual for rights holders providing information about how to lodge such applications to make the registration process easier.

Applications are valid for one year and can be renewed indefinitely – so long as the rights holder continues to own the relevant IP rights which are the subject of the application. Given the uncertainty of what will happen after Brexit, it would be wise to lodge both a UK and an EU application.

Key findings in the Commission's Report

  • China still remains the leading manufacturing country of counterfeit goods, with over 80% of all counterfeit goods detained by Customs emanating from there.
  • In nearly 90% of detentions, the counterfeit goods were destroyed or the rights holder initiated court proceedings against the importer.
  • The top four categories of detained counterfeit goods were: (a) cigarettes (24% of total goods detained); (b) toys (17%); (c) foodstuffs (13%); and (d) packaging material (12%). The increase in foodstuff detentions (up from 7% in 2015) was due to large amounts of counterfeit candy being detained.
  • There has been an increase in detentions of goods which could potentially be dangerous to consumers' health and safety, such as food and beverages, medicines, body care articles, electrical household goods and toys (rising to 34.2% of total goods detained from 25.8% in 2015).
  • The majority of detained goods (92%) were suspected of infringing a trade mark, with the remainder being detained for suspected infringement of:
    • registered and unregistered design rights (main categories: office stationery, toys, mobile phone accessories, lighters and body care articles);
    • copyright (main categories: toys, bags and wallets, mobile phones and office stationery);
    • patents (main categories: mobile phones, medicines, LED lights and laminate flooring);
    • plant varieties (main category: fruit); and
    • geographical indications (main category: spirit drinks).

For more information on the findings, please click here to view the Report or contact a member of our team.

Cassandra Hill is a Managing Associate in the IP team at Mishcon de Reya

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