Infringement : the customs measure

26.08.2002

One of the means proposed by the French Law against the infringement of a design or a trademark is that the customs administration may suspend:



In FranceOne of the means proposed by the French Law against the infringement of a design or a trademark is that the customs administration may suspend release of goods or detain them in the course of its inspections goods that seem to be infringing a design or a trademark right (Art **1** and **2** of the French Intellectual Property Code).The proceedingsThe holder of a design or trademark has to lodge a request for suspending release or detaining of goods by the customs administration. This request shall comprise (**3** and **4**)1) name and address of the requester2) eventually, the name and address of a representative3) the capacity of the requester4) identification of the mark or design5) description of the allegedly infringing goods, and any known information on the goods.This request shall be valid for one year and may be renewed.The customs administration can suspend release of goods or detain every goods alledged to be an infringement (should the goods be for a commercial traffic or simply hold by travelers) during 10 working days.It informs the requester of the nature and the recipient of the goodsWithin this 10-days period the holder of the right can seize the territorially competent President of the Court of First Instance and obtain from the customs administration the names and addresses of: - the sender ; - the importer ; - the consignee.According to decision **6** of the EJC, this information has to be communicated.Case of goods in transit : according to decision **8** of the EJC, goods lawfully manufactured in a Member State of the European Community which are intended to be placed on the market in another Member State where they may be lawfully marketed, cannot be detained during their mere transit through France.In the European CommunityThe Council Regulation n° **12**, as amended by Regulation n° **14**, lays down "measures to prohibit the release for free circulation, export, re-export or entry for a suspensive procedure of counterfeit and pirated goods".This Regulation aims :- "counterfeit goods", which are goods and packaging thereof, on which is a sign, identical or similar to a trade mark, and without the authorization of the holder. Are also considered as counterfeit goods "any trade mark symbol (logo, label, sticker, brochure, instructions for use or guarantee document) whether presented separately or not" ; - "pirated goods" : goods which are or embody copies made without the consent of the holder of the copyright, neighbouring rights, or of a design right ;- goods infringing a patent and manufactured without the consent of the holder. Is also aimed, any mould or matrix which is specifically designed or adapted for the manufacture of such goods.The proceedings is close to the French proceedings : the customs administration informs the holder who has 10 working days to have his right enforced by court. Some samples of the goods can be taken out. On the contrary, the goods are released.The Regulation tells that the holder of a Community Trade Mark can, by a mere request, ask to obtain the intervention of the customs authorities of different Member States.A representative should then be indicated in each designed State to be contacted by the customs administration.In case of goods suspected of infringing patents or design rights, the owner, importer or consignee of the goods shall be able to have the goods in question released or their detention revoked against provision of a security, where no interim measures have been imposed by a substantive decision (Article 7).Article 8 of the Regulation presents special dispositions applicable to goods infringing an IP right : they can be destroyed or disposed outside the channels of commerce. It should be noticed that, in general, simply removing the trademarks shall not be regarded as having enough effect.