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- Counterfeiting and protected rights
- Legislation and practice
- Application For Action - AFA - for the enforcement of intellectual property rights
- Law enforcement: the role of the Customs Agency
- Databases supporting the investigative process
- Competent directorates in the fight against counterfeiting
- Useful Web links
Counterfeiting and protected rights
Counterfeiting is an economic crime which causes serious damage to global economy, it affects the production process of businesses thus resulting in job loss, and represents a threat for the health and safety of consumers and environment.
The consumer is often not aware of the damage and risks he might run by purchasing a product that infringes intellectual property rights: counterfeit consumer goods, such as medicines, foodstuffs, cosmetics, spare parts for cars, toys, clothing, electronic and computer products are produced using sophisticated and deceptive techniques and distributed by the organized crime.
Counterfeit goods may arrive on domestic market:
- directly from third countries: the entry in the Italian territory is declining also due to the stringent checks carried out by the Customs and Monopolies Agency in Italian ports and airports;
- from other EU countries, where they are released for free circulation and then destined for consumption in another Member State;
- may be produced in the national territory: it is usually “high-quality” counterfeits made in well-equipped factories in which high quality goods are manufactured and released in the market by criminal organizations.
EU regulation No.608/2013, in force since 1 January 2014, in which the European Union laid down the rules for the protection of intellectual property rights and regulated the intervention of Customs authorities in case of goods suspected of counterfeiting, in art. 2 defines:
- goods which are the subject of an act infringing a trade mark in the Member State where they are found and bear without authorisation a sign which is identical to the trade mark validly registered in respect of the same type of goods, or which cannot be distinguished in its essential aspects from such a trade mark;
- goods which are the subject of an act infringing a geographical indication (PGI, PDO) in the Member State where they are found and, bear or are described by, a name or term protected in respect of that geographical indication;
- any packaging, label, sticker, brochure, operating instructions, warranty document or other similar item, even if presented separately, which is the subject of an act infringing a trade mark or a geographical indication, which includes a sign, name or term which is identical to a validly registered trade mark or protected geographical indication, or which cannot be distinguished in its essential aspects from such a trade mark or geographical indication, and which can be used for the same type of goods as that for which the trade mark or geographical indication has been registered.
- goods which are the subject of an act infringing a copyright or related right or a design in the Member State where the goods are found and which are, or contain copies, made without the consent of the holder of a copyright or related right or a design, or of a person authorised by that holder in the country of production.
Major innovations introduced by the EU regulation No. 608:
- Customs protection extended to new rights and infringements;
- New specific procedure for small consignments;
- exchange of information with third countries for goods in transit suspected of infringing an intellectual property right;
- establishment of a central electronic database (COPIS) where all information relating to applications requesting the customs authorities to take action for the enforcement of IPR is stored.
The intellectual property rights protected under Regulation EU no. 608/2013 are:
- Copyrights or any related right;
- Geographical indications;
- Supplementary protection certificates for medicinal products and for plant protection products;
- Plant variety rights;
- Topographies of semiconductor products;
- Utility models;
- Trade name.
Customs authorities are to take action for:
- goods entering or leaving the customs territory of the Union;
- goods declared for release for free circulation, export or re-export;
- goods placed under a suspensive procedure or in a free zone or free warehouse.
Regulation no. 608/2013 shall not apply to:
- goods that have been released for free circulation under the end-use regime;
- goods contained in travellers’ personal luggage provided that they are of a non-commercial nature;
- goods that have been manufactured with the consent of the right-holder or goods manufactured, by a person duly authorised by a right-holder to manufacture a certain quantity of goods, in excess of the quantities agreed between that person and the right-holder. These goods fall within the scope of the so-called illegal parallel trade (whereas 6), i.e. intellectual property rights which are not “exhausted”, and of the so-called overruns – art. 1.5 - respectively.
The most recent EU regulation No.2424/2015 - pdf on EU trade mark, which came into force on 23 March 2016, allows the customs authority to also control goods in transit in the Union destined for third countries, in case of an infringement of an intellectual property right. It applies:
- to goods passing through the territory of a country or territory that is not part of the customs territory of the Union under the external Union transit procedure as regulated by the EU Customs Code under Articles 226, 234 and 236.
Small consignment means a postal or express courier consignment, which contains three units or less or has a gross weight of less than two kilograms.
‘Unit’ - if unpacked - means goods as classified under the Combined Nomenclature in accordance with Annex I to Council Regulation (EEC) No 2658/87 of 23 July 1987 on the tariff and statistical nomenclature and on the Common Customs Tariff, or – if packed - the package of such goods intended for retail sale to the final user.
The applicant shall explicitly request the use of the procedure in the application for action - box 10 of the form - and undertake to bear the costs for the destruction of goods.
Goods in small consignments, suspected of being counterfeit or pirated, can be destroyed according to the conditions laid down in Articles 25 and 26, only in case of counterfeit, non-perishable goods covered by a decision granting an application for action.
This procedure is irreconcilable with the national criminal justice system that does not allow for the immediate destruction of the goods suspected of being counterfeit before the judicial authority has ascertained the existence of the infringement.
The application for this procedure, submitted to the customs authorities after notification of the suspension of the release or detention of the goods, shall be a national application and shall be submitted within four working days of the notification of the suspension of the release or detention of the goods. In this case, the electronic submission of the application is not compulsory.
The procedure is not allowed for perishable goods.
It is the new central database of the European Union in which the Member States enter all the information needed to fill in the application for action (AFA) that they intend to submit to the competent customs services.
The data entered - except for those marked as “confidential” by the holder - are shared by all Member States and the Commission.