(*) EU Regulation 608/2013 du 12 June 2013
and French Intellectual Property Code - CPI (L.335-10, L521-14, L614-31, L716-8 CPI)
1- Under the French customs code
This procedure, based on the French Customs Code, allows Customs to handle rapidly and efficiently counterfeit sent in small consignments (often handled by the services of express freight and postal freight).
When
they act under their Customs Code, even if Customs services could act on their own initiative they may need sometime the expertise of the owner of the rights. In that case, article 59bis of the Customs Code applies and provides that
«
Shall be obliged to adhere to the professional secrecy, in accordance with the conditions and subject to the penalties of the Article 226-13 of the Penal Code, the Customs officials as well as any other person by reason of their official functions or attributions will have to exercise at the central administration or into the external Customs services or to intervene to apply the Customs rules ».
This lack of communication can be very frustrating for the right owner who is informed about possible counterfeiting but who cannot obtain any
details about this situation.
We have questioned the Customs General Directorate on at least the communication of the quantity involved and the answer given by the General Directorate is not really positive :
“it does not seem possible to communicate in the near future the numbers of the products concerned, although we are aware of the interest of such information to evaluate the results of the investment made by the right owner in its fight against the counterfeiting”.
Firstly because no express provision in that regard has been set up, in opposition to what is provided on the basis of the EU Regulation and the CPI and secondly the practice according to which the customs services send pictures to be expertized is an informal practice without any legal bases and simply intended to avoid an unjustified seizure.
2- Under the EU Regulation 608/2013 or CPI
As it was the case under the former
regulation, the rules arising from the new EU Regulation 608/2013 (article 17.2 and 18.2) and the law of March 11, 2014 (article L.716-8 §3 CPI for the trademarks) continue to allow the transmission of information to the rights owners or his representative regarding the nature or the quantity of infringing goods.
In addition, due to the new drafting of the Annex 5 (regarding the disclosure of Customs’ professional secrecy), it is now possible for the rights owner, to request before the end of the ten days deadline of the notification the information regarding the consignor, consignee, declarant or holder of the goods as well as the provenance and destination of the goods provided that such information are used in
accordance with article 21 of regulation 608/2013 namely:
- a) to initiate proceedings to determine whether an intellectual property right has been infringed and in the course of such proceedings;
- b) in connection with criminal investigations related to the infringement of an intellectual property right and undertaken by public authorities in the Member State where the goods are found;
- c) to initiate criminal proceedings and in the course of such proceedings;
- d) to seek compensation from the infringer or other persons;
- e) to agree with the declarant or the holder of the goods that the goods be destroyed in accordance with Article 23(1);
- f) to agree with the declarant or the holder of the goods of the
amount of the guarantee referred to in point (a) of Article 24(2).
These conditions are somewhat more limited where the detention is based on the CPI but, in practice, the result is identical in terms of the communication of the information.
Consequently, whereas prior to May 2016, the lifting of the professional secrecy and the communication of the information resulting therefrom was only possible where the right owner undertook to
bring legal proceedings, he has now the possibility to obtain this information,
without any prior commitment, where the products are counterfeit. This information may not be used for purposes other than the implementation of the simplified destruction procedure or starting legal action.
The French Customs authorities specifies also that no sanction will be taken in case the information provided in that regard lead the right owner to conclude that the goods are not counterfeiting.
These sanctions (i.e. the cancellation of the application for action, its suspension or the refusal of its extension), related to the
lifting of the professional secrecy essentially concerns the situation in which the products are counterfeit and the information provided would be used by the right owner to deal with the declarant/holder of the goods in order to authorize their re-entry into the market after the Customs suspension of release procedure.