Customs Detention

Request for Customs Intervention

Principle

The request for customs intervention is a preventive measure asking the customs administration to detain goods suspected of infringing your patent (as this is also possible for trademarks, designs, geographical indications, copyright, and related rights) for a limited period.

The request for customs intervention is provided for by:

• Regulation (EU) No 608/2013 of 12 June 2013 and
• the Intellectual Property Code (L614-32 IPC, particularly concerning patents).

It is entirely possible to request customs intervention based on the legal framework (i.e., EU Regulation or IPC) of your choice. While the concepts are similar, certain differences may be noted.

Duration of the Request for Intervention

The request for intervention is free of charge (Article 8, Regulation (EU) No 608/2013 of 12 June 2013, with no provision in the IPC) and valid for one year from the date of acceptance of the application (Article 11.1, Regulation (EU) No 608/2013 of 12 June 2013 and R335-7 IPC together with R614-36 IPC).

It is renewable free of charge upon written request (Article 12.1, Regulation (EU) No 608/2013 of 12 June 2013 and R335-7 IPC together with R614-36 IPC).

Patent or Patent Application?

It does not appear possible to request customs intervention based on a mere application.

It is therefore necessary to have a granted patent (wording of Article 2, Regulation (EU) No 608/2013 of 12 June 2013 and Article L614-32 IPC).

Who Can File the Request?

The request for intervention may be filed by:

• at national or Union level:
  • the proprietor of the patent (Article 3(1), Regulation (EU) No 608/2013 of 12 June 2013 and Article L614-32 IPC);
• at national level only:
  • any person authorized by the proprietor (Article 3(2), Regulation (EU) No 608/2013 of 12 June 2013);
  • any licensee (L614-32 IPC), exclusive or non-exclusive;
• at Union level only:
  • an exclusive licensee for at least two countries, if this licensee is authorized to take infringement action in those countries (Article 3(3), Regulation (EU) No 608/2013 of 12 June 2013).

Form of the Request

Principle

To request customs intervention, the following must be provided to customs (Article 6.3, Regulation (EU) No 608/2013 of 12 June 2013 and R335-6 CPI together with R614-36 CPI):

• A request form for intervention based on Regulation (EU) No 608/2013 of 12 June 2013 or on the intellectual property code (available on the French customs website);
• A copy of the patent;
• Proof of the right to act (see above);
• A technical, precise, and detailed description of the authentic goods (markings, barcodes, images, etc., see Order of 29 June 2015, Art 2);
• Information enabling the distinction between genuine and counterfeit products (origins of counterfeits, differences, etc.);
• The contact details of the person to be contacted (legal and technical contact, most often the proprietor’s IP representative).

Specifics regarding the technical nature of a « patent »

The protection afforded by a patent, unlike that afforded by a trademark for example, can be more complex to grasp.

It is therefore important to clearly describe the visible distinctive features of the products alleged to infringe, rather than the features of the patent (e.g., « the phones alleged to infringe have a curved back without a logo » rather than « the phones alleged to infringe have a 4G chip implementing the data compression process xxx« ).

It should not be forgotten that the customs officer is not a technician: the features must be immediately apparent.

As a lawyer friend pointed out, it may be advisable to strengthen protection through different types of rights (trademarks, designs, etc.).

Submission of the request

The request must be sent to the email address contrefac@douane.finances.gouv.fr and, for documents bearing a signature, by postal mail to (Order of 29 June 2015, Art 1):

Direction générale des douanes et droits indirects Bureau E1
Politique tarifaire et commerciale
Section Intellectual Property and Infringement
11, rue des deux Communes 93558 MONTREUIL cedex

Decision to accept or reject the request

The applicant is notified within 30 working days of the decision to grant or reject the request (Article 9.1, Regulation (EU) No 608/2013 of 12 June 2013) from the date of receipt of the request (R335-7 CPI together with R614-36 CPI).

Customs detention

Detention proper

Principle

When customs authorities detect goods identified in the application, they may detain such goods (Article 17.1, Regulation (EU) No 608/2013 of 12 June 2013 or Article 322 bis of the Customs Code together with Article 38 of the Customs Code, fourth paragraph, 9°).

The applicant and the holder of the goods are then notified as soon as possible:

• 1 working day for customs detention under the EU Regulation (Article 17.3, Regulation (EU) No 608/2013 of 12 June 2013)
• « immediately«  for customs detention under the IPC (Article L614-32 IPC, second paragraph).

The Public Prosecutor is also notified in the case of customs detention under the IPC (Article L614-32 IPC, second paragraph).

In the case of customs detention under the IPC, the following are sent to the applicant:

• the nature/quantities of the products (Article L614-32 IPC, third paragraph);
• photographs (Article L614-32 IPC, third paragraph);
• upon request by the applicant and « for the purpose of initiating legal proceedings«  (Article L614-32 IPC, sixth paragraph, meaning you may not use this information to negotiate directly with the infringer):
  • the name and address of the consignee,
  • the name and address of the sender,
  • the name and address of the declarant,
  • the name and address of the holder of the goods,
  • the origin,
  • the provenance, and
  • the destination of the goods.

It is noteworthy that Article 17.4 of the Regulation (EU) No 608/2013 of 12 June 2013 provides almost identical provisions for EU detention (with one notable exception… but we’ll let you find it):

• the nature/quantities of the products;
• photographs;
• upon request by the applicant and for a limited number of uses (see Article 21.4 of the Regulation (EU) No 608/2013 of 12 June 2013, for civil or criminal proceedings, negotiating with the infringer, etc.):
  • the name and address of the consignee,
  • the name and address of the sender,
  • the name and address of the declarant,
  • the name and address of the holder of the goods,
  • the customs procedure,
  • the origin,
  • the provenance, and
  • the destination of the goods.

So? Did you spot the difference?

Before 2016, customs authorities systematically required certification that the information provided would only be used for the purpose of initiating legal proceedings. However, since the update of their form (Request for lifting of customs professional secrecy – Annex 5), the wording has become more permissive: « I also undertake not to use this information for purposes other than those provided for by the applicable regulations« .

Early release

In the case of EU detention only, the holder of the goods may request early release from customs authorities (Articles 24.1 and 24.2, Regulation (EU) No 608/2013 of 12 June 2013) if:

• a security deposit is provided;
• a judge has not yet ordered provisional measures;
• customs formalities have been properly completed.

Storage fees

Customs authorities may request the applicant to reimburse storage fees (Article 29.1, Regulation (EU) No 608/2013 of 12 June 2013, Article L614-32 IPC, fifth paragraph and Article R335-15 IPC together with Article R614-36 IPC).

Examination by the Applicant and Samples

During this retention period, it is possible to inspect the goods (Articles 19.1 and 19.2, Regulation (EU) No 608/2013 of 12 June 2013 and L614-35 CPI).

The customs authorities may take samples:

• in the context of an INPI retention, the sampling will consist of taking 2 samples: one for customs, one for the holder of the goods, no sample is provided to the applicant (R614-37 CPI),
• in the context of an EU retention, the applicant may request to be provided with a sample « upon request and solely for the purpose of analysis and to facilitate the subsequent procedure » (Article 19.2, Regulation (EU) No 608/2013 of 12 June 2013).

The Applicant’s Position

Principle

The applicant must then take a position regarding the infringing nature within a period of 10 working days (3 days for perishable goods) from the date of notification by customs (Article 23.1 and 23.3, Regulation (EU) No 608/2013 of 12 June 2013 and L614-32 CPI, 4th paragraph).

This position is taken:

• by providing justification (L614-32 CPI, 4th paragraph, or Article 23.5, Regulation (EU) No 608/2013 of 12 June 2013):
  • either by obtaining interim measures decided by the Paris District Court,
  • or by having initiated civil or criminal proceedings (and having provided the required guarantees),
  • or by having filed a complaint with the Public Prosecutor.
• by requesting the destruction of the goods (see below, L614-36 CPI)

Clarification on the Deadline

A small oddity… the « 10 working days » deadline is not calculated in the same way depending on whether the retention was carried out under the EU regulation or the French legislation:

• the 10 working days deadline does not include public holidays, Saturdays, and Sundays under the EU regulation (Regulation (EEC, Euratom) No 1182/71 of the Council of 3 June 1971 determining the rules applicable to periods, dates and time limits, Article 3(3));
• the 10 working days deadline does not include public holidays and the weekly rest day (generally Sunday) according to French practice (since there is apparently no legal text providing a definition) (see written questions submitted to the Presidency of the National Assembly and responses from the ministers, 14 September 1987, page 5120, question by Mr. Clément).

Extension

It is possible to request an extension of the deadline by an additional 10 working days by sending a motivated letter to the customs services (Article 23.4, Regulation (EU) No 608/2013 of 12 June 2013 and L614-32 CPI, 4th paragraph).

This only applies to non-perishable goods.

The Destruction of Goods

Principle

Infringing goods may be destroyed without court intervention:

• the holder of the goods does not object to it (within the 10-working-day period mentioned above, Article 23.1.c, Regulation (EU) No 608/2013 of 12 June 2013, L614-36 CPI I-3° and II);
• the applicant considers that the goods are infringing products (supported by an expert opinion, L614-36 CPI, Article 23.1.a, Regulation (EU) No 608/2013 of 12 June 2013) and states in writing that they wish for their destruction (L614-36 CPI, Article 23.1.b, Regulation (EU) No 608/2013 of 12 June 2013).

This destruction is carried out under the responsibility of the applicant by the customs authorities (Article 23.2, Regulation (EU) No 608/2013 of 12 June 2013, L614-36 CPI, I-2°).

This procedure avoids lengthy and costly legal proceedings.

Destruction costs

The customs authorities may request the applicant to reimburse the destruction costs (Article 29.1, Regulation (EU) No 608/2013 of 12 June 2013 or L614-34 CPI together with R335-15 CPI together with R614-36 CPI).

Special case of small consignments of non-perishable goods

Within the EU framework, if the applicant has explicitly targeted this procedure in their application and products covered by their application are found in « small consignments » (i.e., postal consignments of fewer than 3 items or weighing less than 2 kg, Article 1, Regulation (EU) No 608/2013 of 12 June 2013), a simplified destruction procedure exists (Articles 26.1 and 26.2, Regulation (EU) No 608/2013 of 12 June 2013):

• without providing the applicant with the contact details of the holder of the goods;
• without notifying the applicant of the customs detention.

Only a notification is sent to the holder of the goods to inform them that destruction is being considered (Article 26.3, Regulation (EU) No 608/2013 of 12 June 2013).

The holder may then object within a period of 10 days from the date of notification (Article 26.4, Regulation (EU) No 608/2013 of 12 June 2013):

• if they do not object,
  • the goods are destroyed under customs supervision (Articles 26.5 to 26.7, Regulation (EU) No 608/2013 of 12 June 2013);
  • the applicant is informed of the quantities destroyed (Article 26.7, Regulation (EU) No 608/2013 of 12 June 2013);
• if they object,
  • the applicant is notified (quantities, photographs, and upon request, the name and address of the consignee, the sender and the declarant or the holder of the goods, the customs procedure, as well as the origin, provenance and destination of the goods) (Article 26.8, Regulation (EU) No 608/2013 of 12 June 2013);
  • the customs detention is lifted if, within 10 days from the previous notification, the applicant does not inform the customs authorities of the initiation of infringement proceedings (Article 26.9, Regulation (EU) No 608/2013 of 12 June 2013).

In Case of Refusal of Destruction

If the applicant considers the goods to be an infringing product, but the holder of the goods opposes their destruction (L614-36 CPI, III, Article 23.3, Regulation (EU) No 608/2013 of 12 June 2013), the applicant is notified accordingly.

The applicant must then, to avoid the release of the goods within 10 days from the notification of detention (L614-36 CPI, III, Article 23.5, Regulation (EU) No 608/2013 of 12 June 2013):

• either initiate legal proceedings:
  • through civil or criminal action to file an infringement suit,
  • possibly in expedited proceedings to request provisional measures,
• or file a complaint with the public prosecutor.