Application for customs action

An application for customs action is the act by which the holder of an intellectual property right requests the customs authorities to monitor flows of goods and detain those suspected of infringing the right. It is organised by Regulation (EU) No 608/2013 concerning customs enforcement of intellectual property rights, supplemented in domestic law by the French Intellectual Property Code for goods in free circulation. It is the usual precondition for effective customs detention.

Rights and applicants covered

The Regulation covers trade marks, designs, copyright and related rights, patents, supplementary protection certificates, plant variety rights, geographical indications, semiconductor topographies and utility models. It excludes, however, infringements arising from parallel trade in genuine goods and from overruns of licensed quantities. The application may be made by the right holder, an exclusive licensee or, subject to conditions, an authorised non-exclusive licensee, a collective management organisation or a group of producers of geographical indications. The holder of a Union title, such as a European Union trade mark, may lodge a so-called Union application covering several Member States, whereas a national title gives rise only to a national application.

Content and duration of the application

The application is lodged with the competent customs department on a harmonised form, in France with the Directorate General of Customs. It contains precise identification of the rights invoked, technical and commercial information enabling officers to recognise suspect goods, such as photographs, characteristics of genuine products, usual distribution channels and indicators of infringement, together with the applicant’s undertaking to assume liability and the costs of the procedure. It is granted for a maximum period of one year, renewable on request made before expiry. The applicant must update the information provided and report without delay any lapse or change in the right.

Obligations of the applicant

The applicant undertakes to initiate proceedings or the destruction procedure within the time limits following each detention, to bear the costs of storage, handling and destruction, and to answer for damage caused to the holder of the goods in the event of an unfounded detention or of abandoned proceedings. Information provided by customs, in particular on the consignor and consignee, may be used only for the purposes of court proceedings, destruction or seeking compensation. Breach of these obligations may result in refusal to extend, or suspension of, the decision granting the application.

Key points

An application for action turns customs into a monitoring relay for the right holder for a renewable one year period. It applies to national titles or, for Union titles, in several Member States at once. Prepare a detailed product identification file and keep the information up to date, since the speed of response to each detention depends on the quality of that file and on the internal organisation put in place to respond within ten working days.

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This glossary entry is general in scope and does not constitute legal advice.

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