Customs watches are an invaluable weapon for brands in the fight against counterfeit and copycat products flooding into the European Union. EU customs regulation allows IP right holders to apply to Customs authorities throughout the EU asking that they search for and detain goods entering or leaving the EU which are suspected of infringing their IP rights. If goods are seized by Customs, the party responsible will often consent to their destruction (or consent will be assumed) meaning that the issue is resolved quickly and inexpensively. Customs enforcement offers many brands a cost-effective means of stopping large quantities of infringing goods from ever reaching the EU market.
Given the importance of Customs enforcement for many businesses the impact of Brexit on this area has received surprisingly little attention. At the moment IP owners can file a single Application for Action (AFA) covering the entire EU, including the UK. This will no longer be the case after the end of the Brexit transition period. From 1st January 2021, IP owners will need to have separate AFAs in place for the UK and EU, and any existing EU AFAs will no longer cover the UK. More controversially, any EU AFAs that were filed through the UK Customs authorities (typically the case for most UK applicants) will become invalid after 31st December 2020, even in the remaining EU member states, and must be refiled via the Customs office of a member state other than the UK.
Customs AFAs can take some time to assemble, especially in light of the recent new requirement to obtain an Economic Operator Registration Identification (EORI) number. We recommend that IP holders take steps now to ensure that there is no gap in coverage after 31st December 2020.
Carpmaels & Ransford has had a presence in the EU, beyond the UK, for many years. We have recently enhanced our office in Munich, and we also have an office in Dublin. Our lawyers have obtained the qualifications necessary to ensure that Carpmaels will continue to represent clients in EU matters as usual after Brexit, which includes filing EU AFAs for Customs enforcement purposes.
If you have any questions, please contact our Trade Mark team who can help you ensure that you have comprehensive brand protection in place in the UK and EU.