Customs surveillance of IP rights: a double protection in France
Customs surveillance may prove a very useful aid in the enforcement of IP rights. Particularly in France, which ranks as the third country with the most effective IP system in the world by the U.S. Chamber International IP Index (Eighth Edition – 2020), customs surveillance is a quick and efficient preventive step that can be taken even if the IP right holder is not aware of all acts of infringement.
Whatever the IP right (copyright, trademark, design, patent/SPC, etc.), right holders can benefit from additional protection under both the French IP Code and the European system provided by Regulation (EU) 608/2013.
These two procedures are complementary and can be requested free of charge. The Regulation allows goods to be detained before customs clearance at EU borders with third countries, while the IP Code provides for checks of goods already cleared through customs and in circulation within the national territory.
To benefit from the action of the Customs and facilitate the interception of suspicious goods, IP right holders must file an application for action (AFA) and provide Customs with some relevant information: the IP right covered, the genuine and allegedly infringing goods, the infringement network… Once approved by the Customs authorities, the AFA is valid for a one-year period and can be renewed upon written request.
An AFA will allow the Customs authorities to detain for a period of ten days the suspicious goods (e.g., products with a similar trademark affixed to them) and alert the IP right holder so that it may assess whether its rights have actually been infringed and determine the most appropriate course of action (release, “simplified destruction” or judicial proceedings).
EORI number: a new requirement for the management of AFAs in the EU
The European Commission recently embarked on complete digitalization as the best way to manage AFAs, making the possession of an Economic Operator Registration and Identification (EORI) number a prerequisite for any action. The main purpose of the number is to strengthen security within the EU and ensure a better identification of anti-counterfeiting stakeholders in dealings with Customs authorities.
The EORI number was initially introduced as part of the system to secure the export and import of goods out of and into the EU. It was used to identify each economic operator in relation to its dealings with the Customs authorities, especially for goods clearance or tax purposes.
From September 15, 2020 onwards, official AFA forms will require applicants to provide an EORI number, which is unique throughout the EU territory. As a result, IP right holders will need to have an EORI number registered before they can file a new AFA or extend or modify an existing one. AFAs based on the ex officio procedure will also be affected. In other words, as from that date, requests relating to an AFA, irrespective of its filing date, cannot be processed without such EORI number.
All companies carrying out customs clearance operations in France or in any other EU Member State must be EORI-registered. This applies to all companies which are incorporated:
- in France, or
- outside of the EU (if not already registered in another EU Member State).
From a practical standpoint, obtaining an EORI number is an easy and free-of-charge process. A company may request it through a representative and only needs to provide a certificate of incorporation. The EORI number should then be generated within 48 hours. Unlike the AFA, which has to be renewed every year, the EORI number is granted once and once only.
Client Alert 2020-512
