Edwards Wildman Client Advisory: Important changes in EU law in the fight against counterfeit goods: what brand owners need to know

January 2014

A new Regulation

On 1 January 2014, a new anti-counterfeiting Regulation, EU Regulation 608/2013 (the “Regulation”), came into force. The Regulation regulates the EU’s anti-counterfeiting regime, which is implemented through the respective Member States’ border authorities. As an ‘EU Regulation’, as opposed to an ‘EU Directive’, the Regulation applies directly in all 28 Member States with immediate effect. It also repeals the previous EU regulation covering anti-counterfeiting (Reg 1383/2003) and offers greater protection to brand owners than was offered under the old regime. Nature of the changes
As far as brand owners are concerned, the Regulation makes procedural changes only, there are no changes to the substantive law. However, the procedural changes are important.

Key changes at a glance

The key changes you should be aware of are as follows:

Introduction of a new standard form Application for Action (“AFA”)
AFAs are the applications a brand owner makes to the applicable authorities to request that any infringing counterfeit goods detected by EU customs are seized. A new AFA has been introduced which will provide additional information for customs through a streamlined application procedure. This means, however, that whilst all existing AFAs will remain in force until expiry, they may no longer be renewed.
New procedure for small consignments
Parcels of counterfeit goods containing three units or less or weighing less than 2 kilograms may now be dealt with under a new procedure. Customs may destroy such parcels without requiring the consent of the brand owner (assuming no objections are raised by the holder/shipper etc). The procedure is simple and optional; brand owners opt-in using a tickbox on the new AFA form. This will be a useful costs-saving measure: for example, orders from online stores outside the EU, containing counterfeits and which fall into the small consignment category, may be processed with minimal inconvenience/cost for you.
Simplified procedure made compulsory across all EU Member States
The ‘simplified procedure’ is the most common way for a brand owner to enforce its rights against counterfeiters once goods have been seized, under which the brand owner requests that the owner of seized suspect goods consents to their destruction. If the owner agrees or, far more commonly, fails to respond within a given period, the goods are then destroyed without the need for court proceedings. The simplified procedure will now be available in all Member States, again with potential costs savings for brand owners.

A new enforcement Database

A second important change to the EU’s anti-counterfeiting regime is the introduction of a new enforcement database (the “Database”). The Database will act as a central depository of sensitive information that will assist customs and other authorities in the fight against counterfeiters. Whilst the Database is currently in its pilot phase (it goes live in April), brand owners may upload information already.
How can brand owners use the Database
Brand owners can upload information that may help distinguish counterfeits from genuine goods. This is then accessible by enforcement agencies in the search for counterfeit goods – although the rights holder can specify which authorities and in which jurisdictions can access the uploaded information.
Edwards Wildman can guide you through the process of applying for a Database account, although the application must be made by the brand owner itself. Once an account has been opened, Edwards Wildman would be pleased to manage the account on your behalf.


Why use the Database?

There are no official fees for setting up an account or using the Database, making it a cost-effective measure against counterfeiters. More specifically, the Database has three key benefits. Firstly, all information provided is translated into all the official languages of the European Union, mitigating the risk of counterfeit goods being missed because local customs and police are unable to translate information provided by a brand owner. Secondly, there is no requirement to have an AFA in place in order to use the Database, making the Database a real alternative to brand owners in their brand protection, as a pro-active approach to defending your rights. Thirdly, the Database allows users to set up alerts so they can be quickly notified when seizures are made. For further information on the Database or any of the issues discussed in this client advisory, please contact the authors or your Edwards Wildman attorney.