The Goods Infringing Intellectual Property Rights (Customs) (Amendment) Regulations 2010 have been laid before Parliament and will come into force on 10 March 2010. A case in the Belfast courts found that the UK procedures were not complaint with Council Regulation 1383/2003. The 2010 Regulations are intended to bring the UK customs procedures fully into line with the Council Regulation. Significantly for brand owners, this includes providing for a "simplified procedure" which will allow officers at the border to destroy goods suspected of infringing an intellectual property right either with the agreement of one of the interested parties or where the interested parties fail to provide any response when offered the opportunity to agree or object to the abandonment of the goods.
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Currently, HMRC require brand owners to issue proceedings for trade mark infringement if no agreement can be reached with the declarant, holder or owner of the goods within the set time frame. The 2010 Regulations will therefore be welcomed by rights holders; the simplified procedure will mean that, when no response is received, the default position will be seizure and destruction of the goods by HMRC. This should reduce the necessity to issue proceedings in most cases where a response is not forthcoming.
Full Article
The Goods Infringing Intellectual Property Rights (Customs) (Amendment) Regulations 2010 (the 2020 Regulations) have been laid before Parliament. The 2010 Regulations are intended to bring the UK customs procedures fully into line with Council Regulation 1383/2003 (the Council Regulation). Significantly for brand owners, this includes providing for a "simplified procedure" which will allow officers at the border to destroy goods suspected of infringing an intellectual property right either with the agreement of one of the interested parties or where the interested parties fail to provide any response when offered the opportunity to agree or object to the abandonment of the goods.
What does the Council Regulation do?
The Council Regulation provides a facility for owners of intellectual property rights to apply to customs authorities to seize goods suspected of infringing their rights in respect of consignments of goods entering into the European Community. Under these arrangements goods suspected of infringing an intellectual property right are detained by the customs authority for a limited period to enable rights holders to take any action they consider necessary to protect their rights. The goods may then be seized and destroyed or released. It was implemented in the UK by the Goods Infringing Intellectual Property Rights (Customs) Regulations 2004 (the "UK implementing Regulations").
Why were amendments required to the existing UK implementing Regulations?
In a recent decision, Revenue and Customs Commissioners v Penbrook Enterprises Ltd (to view our previous Law Now article on the decision, please click here) (www.law-now.com/law-now/2009/hmrcjuly2009.htm) the simplified procedure which had been used in the UK, by which HMRC could seize goods suspected of infringing a trade mark or copyright, and therefore liable to forfeiture, on the basis of a statement from the rights holder alone, was in breach of the Council Regulation. (It also found that the strict time limits imposed by the Council Regulation had not been properly enforced.)
In the period between the Penbrook decision and the 2010 Regulations coming into force, HMRC has been forced to change its procedures and to require brand owners to issue proceedings for trade mark infringement if no agreement could be reached with the declarant, holder or owner of the goods within the set time frame. This had put a far greater burden on rights holders as a failure by the declarant, holder or owner, which had up until that point been considered sufficient for the purposes of destruction of the goods, was then insufficient. It was not considered economically viable by some rights owners to issue proceedings against every single infringer, regardless of the number of items seized.
The 2010 Regulations were drafted in response to that decision. Under the 'simplified procedure' set out in the 2010 Regulations, officers at the border may destroy goods suspected of infringing an intellectual property right at the request of the right-holder either with the agreement of one of the interested parties, or where the interested parties cannot be traced or fail to provide any response when offered the opportunity to agree or object to the abandonment of the goods. This amendment means that HMRC can now treat goods as "abandoned for destruction" if the declarant, holder or owner all fail to provide a response. The Regulations will come into force on 10 March 2010.
Comment
The 2010 Regulations will be welcomed by rights holders. The simplified procedure will mean that, where no response is received, the default position will be seizure and destruction by HMRC. This should reduce the necessity to issue proceedings in most cases where a response is not forthcoming.
The Regulations and Explanatory Note can be accessed here (www.opsi.gov.uk/si/si2010/uksi_20100324_en_1).
Further information
A replacement Public Notice will be published on the HMRC website, and a Customs Information Paper will be issued to trade members of the Joint Customs Consultation Committee and other interested business representatives, to coincide with the instrument coming into force.
This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq
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The original publication date for this article was 24/02/2010.