Upload Bilder frei zugänglich

Customs authorities to help combat product piracy


Your contact

It is well known that product piracy is on the increase, mainly in the form of fake copies from the Far East. In this regard the European Commission recently published its proposals for new legislation designed to give customs agents the authority to enforce intellectual property rights. The proposal mainly concerns the expansion and continued development of the existing powers of customs agents, thereby underlining the important role played by customs authorities in the war against product piracy.

Most modern jurisdictions already apply regulations that allow customs agents to help combat the import, export and transit of pirate products:

In Switzerland, special provisions in the intellectual property laws in particular empower customs agents to seize shipments on the basis of an application by the owner of the rights, provided that the owner of the rights can substantiate by prima facie evidence that the goods violate his trademark, design, patent or copyrights. This prima facie evidence can, for example, be furnished in the form of an excerpt from the trademark, patent or design register, or a copy of a judgement confirming copyright protection. The customs authorities can make spot checks of the retained goods and send samples to the applicant so that the latter can check whether his rights were violated. The customs authorities can also destroy the retained goods if the importer (or the consignee for goods in transit) does not file an objection. In this way, pirate products can be removed from the market through confiscation by customs, often without the need for expensive court proceedings. It is only when the importer or consignee expressly refuses to consent to the destruction of the goods that the owner of the rights has to apply to a court for preliminary measures, as the customs administration may only hold back goods for a maximum of 20 business days without a court order.

In the EU a similar procedure applies to intellectual property rights protected in the EU, i.e. Community trademarks and Community design patents registered with the European trademark office in Alicante. By force of the registration of such trademarks, a single application can be filed to request help from the customs authorities of all EU member states. Such an application has to be sent to the customs administration of only one member state, who then forwards it to all EU states mentioned in the application. For all other rights that are protected at a national level rather than for the entire EU (national or international trademarks, designs or patents, and copyrights), a separate application addressed to the national customs administration is required for every EU member state.

The customs procedure can also be helpful in countries outside of Europe. In China, for example, customs agents can seize exports of products that violate trademarks in particular, thus stopping fakes at the source. To exploit this opportunity, however, it is important to have intellectual property rights, in particular trademarks (but also designs), registered in China.

Experience has shown that customs authorities, in particular in the EU and Switzerland, are very keen to help the owners of intellectual property rights combat product piracy. In doing so, however, they depend on receiving the best possible information from the owners of rights regarding the distinguishing features of originals and fakes, contact data for the usual importers of pirate products and their sales channels, etc. In practice, active collaboration between the owners of rights or their representatives and customs officers (e.g. by exchanging information or by providing training for customs officers) brings the best results. It is also crucially important to provide as much detail as possible in the application for support from the customs authorities.


Share post



most read


Highlights

MLL Legal

MLL Legal is one of the leading law firms in Switzerland with offices in Zurich, Geneva, Zug, Lausanne, London and Madrid. We advise our clients in all areas of business law and stand out in particular for our first-class industry expertise in technical-innovative specialist areas, but also in regulated industries.

MLL Legal

Newsletter

Much is still unclear in relation to liability questions around AI tools.

Read our latest post about “Liability during the Lifecycle of an AI Tool” and download our white paper.

Show article.

Our Story

MLL Legal is a leading Swiss law firm with a history that dates back to 1885. The firm has grown both organically and by means of strategic mergers, the latest of which took place on 1st July 2021 between Meyerlustenberger Lachenal and FRORIEP.

The merger establishes MLL Legal, a combined new entity as one of the largest commercial law firms in Switzerland with 150 lawyers in four offices in Switzerland and two offices abroad, in London and Madrid serving clients seeking Swiss law advice.

Our firm has a strong international profile and brings together recognised leadership and expertise in all areas of law affecting commerce today, with a focus on high-tech, innovative and regulated sectors. 

About us

Publications

Click here for our latest publications

COVID-19

Read all our legal updates on the impact of COVID-19 for businesses.

COVID-19 Information

Job openings

Looking for a new challenge?

Our talented and ambitious teams are motivated by a common vision to succeed. We value open and straightforward communication accross all levels of the organisation in a supportive working environment.

Job openings

Firm News

Click here for our latest firm news.

Our Team

The regulatory and technological landscape continually require businesses to adapt and evolve.
Our 150+ lawyers are continuously innovating and striving for improvement in everything they do. We embrace new ideas and technologies, combining our wealth of expertise with creative thinking and diligence. With our hands-on approach, we implement viable solutions for the most complex legal challenges.

Our Team.

LexCast – the podcast series by MLL NexGen

Smart legal education on the go. The LexCast hosted by MLL NexGen provides legal insights in a short format that allows listeners to educate themselves on and about legal issues wherever they are and whenever they find the time.

Listen to our podcast series – stay tuned.

MLL Legal on Social Media

Follow us on LinkedIn.