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How to enter intellectual property objects into the EU customs register

Today, the problem of counterfeit products is acute all over the world, which not only violates the owner’s rights but can also be dangerous for consumers. SION continues to discuss methods of fighting the contract, and this time we will talk about the process of introducing intellectual property into the customs register on the example of Slovakia.

A counterfeit on a world scale is ineradicable, as long as its economic prerequisites exist. However, it is possible to successfully fight with counterfeit at the level of a single country or region. An effective tool for such struggle is the intellectual property rights objects customs registers. Below we will consider the procedure for entering the intellectual property rights objects into the customs register on the example of Slovakia.

THERE ARE TWO TYPES OF APPLICATIONS FOR ENTERING THE INTELLECTUAL PROPERTY OBJECTS INTO THE CUSTOMS REGISTER:

• National ones are submitted to the customs authorities of a Member State in order to protect intellectual property rights in that State;
• Union application is submitted to the customs authorities of the EU Member State in order to protect intellectual property rights in that State and another one or more EU member states.

Obviously, the Union application is better, because it provides protection in the territory of not only one, but several countries, according to the decision of the applicant. However, it is necessary to take into account that the application is made in the language of the country to which we submit it. In the event of filling a union declaration, those states in which protection will be carried out have the right to demand a copy in their own language.

The application must be filled in two copies. If the application is submitted by the representative, it is necessary to attach the document on the basis of which the representation is carried out.

However, when submitting an application, it is necessary to consider the following. According to Art. 5 p. 6 of the Regulation (EU) No 608/2013 in those countries where computer systems for such applications reception and processing are installed, they must be filled out electronically.

As for Slovakia, in accordance with Art. 13 paragraph 1 of Law No. 486/2013 documents can be submitted in both written and electronic forms. But, when filling in electronic form, it is necessary to submit also the written form within 3 working days. Thus, it makes sense to fill in documents only in writing.

WHO CAN SUBMIT THE APPLICATION?

A national or union application may be submitted by:

• right holders;
• collective intellectual property rights management bodies;
• professional protection bodies;
• groups in the understanding of Art. 3 (2) and Art. 49 (1) of Regulation (EU) No 1151/2012, groups of producers in the understanding of Art. 118e of Regulation (EU) No 1234/2007 or similar groups of producers provided for in the legislation of the Union governing geographical indications representing producers with a geographical indication or representatives of such groups;

A national application can be submitted by:

• person or body competent to use intellectual property rights that have been formally authorized by the right holder to initiate proceedings in order to determine whether the intellectual property right was violated;
• groups of producers provided in the legislation of the Member States governing geographical indications, representatives of producers with geographical indications, or representatives of such groups and operators entitled to use a geographical indication, as well as inspection bodies or bodies competent for such Geographical indication;
• the Union application has the right to be submitted by: holders of exclusive licenses covering the entire territory of two or more Member States where such license holders are formally authorized in these Member States by the right holder to initiate proceedings in order to determine whether the intellectual property right has been violated.

The fee for covering the administrative costs associated with the processing of the application is not collected. However, the applicant, who is called the holder of the decision, is obligated to reimburse the costs incurred by the customs authorities or other parties acting on behalf of the customs authorities from the moment of goods release arrest or suspension, including costs for goods storage and handling or goods destruction under customs control.

The competent customs department shall notify the applicant of its decision to grant or reject the application within 30 working days from the date of its receipt.

The application validity is specified in Art. 11 of the Regulation (EU) No 608/2013 and does not exceed one year from the day following the day of application satisfaction. To continue, you must fill in an application for continuation.

Summarizing, it should be noted that entering the intellectual property rights objects into the customs registers is one of the most effective ways to fight counterfeiting. Such actions are a necessary component of the campaign to promote goods and services in the relevant markets. This helps to protect rights holders from harming their business reputation and shortfalls in income associated with goods and services sale.

The material was prepared by Maxim Khomenko, SION’s leading lawyer on the audit issues and intellectual property protecting strategy development. Ask him for advice!