Request for customs intervention

Principle

A request for customs intervention is a preventive measure asking the customs authorities 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:

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 (Art. 8, Regulation (EU) No 608/2013 of 12 June 2013; the IPC does not specify this) and valid for one year from the date of acceptance of the application (Art. 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 (Art. 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.

Therefore, a granted patent is required (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 the national or Union level:
  • at the Union level only:

Form of the request

Principle

To request customs intervention, it is necessary to provide customs with the following (Article 6.3, Regulation (EU) No 608/2013 of 12 June 2013 and R335-6 IPC together with R614-36 IPC):

  • an application 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.);
  • contact details of the person to be contacted (legal and technical contact, usually the IP representative of the proprietor).

Clarification on the technical nature of « patent »

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

Therefore, it is 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 customs officers are not technicians: the features must be immediately apparent.

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

Submission of the Application

The application must be sent to the email address contrefac@douane.finances.gouv.fr and, for documents bearing a signature, by postal mail to (Arrêté du 29 juin 2015, art 1):

Direction générale des douanes et droits indirects Bureau E1
– Politique tarifaire et commerciale – Section Propriété intellectuelle et contrefaçon –
11, rue des deux Communes 93558 MONTREUIL cedex

Decision to Accept or Reject the Application

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

Customs Detention

The Detention Itself

Principle

When customs officers detect goods identified in the application, they may detain those goods (Article 17.1, Regulation (EU) No 608/2013 of 12 June 2013 or 322 bis of the Customs Code together with Article 38 of the Customs Code, 4th paragraph, 9°).

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

The public prosecutor is also notified in the case of customs detention under the CPI (L614-32 CPI, 2nd paragraph).

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

  • the nature/quantities of the products (L614-32 CPI, 3rd paragraph);
  • photos (L614-32 CPI, 3rd paragraph);
  • upon request of the applicant and « for the purpose of initiating legal proceedings«  (Article L614-32 CPI, 6th paragraph, in other words, 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 interesting to note that Article 17.4 of Regulation (EU) No 608/2013 of 12 June 2013 provides almost identical provisions for EU detention (with the notable exception of one provision… but I’ll let you find it):

  • the nature / quantities of the products;
  • photographs;
  • upon request by the applicant and for a limited number of uses (cf. Article 21.4 of Regulation (EU) No 608/2013 of 12 June 2013, civil or criminal proceedings, negotiating with the infringer, etc.):
    • the name and address of the consignee,
    • the name and address of the consignor,
    • 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 is 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 context of an 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 paid;
  • a judge has not yet ordered provisional measures;
  • customs formalities have been correctly completed.

Storage costs

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

Examination by the applicant and samples

During this detention 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).

Customs authorities may take samples:

  • in the context of a CPI detention, 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 detention, the applicant may be provided with a sample « upon request and solely for the purpose of analysis and to facilitate further proceedings » (Article 19.2, Regulation (EU) No 608/2013 of 12 June 2013).

The applicant’s position

Principle

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

This position is taken:

  • by justifying (L614-32 CPI, fourth paragraph, or Article 23.5, Regulation (EU) No 608/2013 of 12 June 2013):
    • either provisional measures ordered by the Paris District Court,
    • or having initiated civil or criminal proceedings (and having provided the required guarantees),
    • or having filed a complaint with the public prosecutor.
  • by requesting the destruction of the goods (see below, L614-36 CPI)

Clarification on the time limit

A small quirk… the « 10 working days » time limit is not calculated in the same way depending on whether the retention was carried out under the EU text or the French text:

Extension

It is possible to request an extension of the 10-working-day time limit by submitting a reasoned letter to the customs authorities (Article 23.4, Regulation (EU) No 608/2013 of 12 June 2013 and L614-32 CPI, fourth paragraph).

This only applies to non-perishable goods.

Destruction of goods

Principle

Counterfeit goods may be destroyed without judicial intervention:

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 designated 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 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 oppose the destruction within a period of 10 days from the date of notification (Article 26.4, Regulation (EU) No 608/2013 of 12 June 2013):

In case of refusal of destruction

If the applicant considers that the goods are counterfeit 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.

The applicant must then, to avoid the release of the goods within 10 days from the date of the detention notification (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 claim,
    • possibly in expedited proceedings to request provisional measures,
  • or file a complaint with the public prosecutor.