Preface -

Customs authorities in the European Union may detain goods under their control which are suspected of infringing intellectual property (IP) rights. Such proceedings are governed by a new Regulation (EU) No 608/20131 issued in 2013 which came into effect on 1 January 2014.

There are limited parallels between customs actions in Europe and proceedings before the U.S. International Trade Commission (ITC). Both sets of actions provide for seizures of infringing goods entering the borders of the respective jurisdictions. However, the U.S. ITC will not seize such goods until it has conducted its own hearing and determination of the validity and infringement of the patents. By contrast, the EU and national proceedings discussed herein provide a temporary barrier against suspect imports, and it is left to the national courts to decide whether this barrier shall be removed or not, provided the importer objects to the detention. Furthermore, to establish standing at the ITC, the right holder must show that an industry in the United States relating to articles protected by the patent exists or is in the process of being established. Such “domestic industry” requirement must not be fulfilled under the European or national customs actions rules. Accordingly, the customs enforcement system can be used by anybody holding IP rights, such as patents, supplementary protection certificates (SPCs), utility models, designs, trade marks and copyrights, in the European Union.

This article offers an overview of the new framework. McDermott will publish updates as the legislation’s framework is developed.