Customs deduction

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Chapter 1. The request for customs intervention

Section 1.1. Principle

The request for customs intervention is a preventive approach asking the customs administration to hold back goods likely to infringe your patent (in particular, as this is also possible for trademarks, designs, geographical indications, copyright and related rights) during a limited time.

The request for customs intervention is provided by:

It is quite possible to request a customs intervention according to the legal basis (ie EU or CPI regulations) of your choice. If the concepts are close, some differences may be noted.

Section 1.2. Duration of the intervention request

The request for intervention is Free (art 8, Regulation (EU) No 608/2013 of 12 June 2013, the IPC does not specify anything) and is valid a year from the decision to accept the file (art 11.1, Regulation (EU) No 608/2013 of 12 June 2013 and R335-7 CPI together R614-36 CPI).

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

Section 1.3. Patent or patent application?

It does not seem possible to request a customs intervention on the basis of a simple request.

It will therefore be necessary to have a granted patent (formulation of Article 2, Regulation (EU) No 608/2013 of 12 June 2013 and the article L614-32 ICC).

Section 1.4. Who can apply?

The request for intervention may be made by:

Section 1.5. Form of demand

1.5.1. Principle

In order to request a customs intervention, it is necessary in particular to provide customs (Article 6.3, Regulation (EU) No 608/2013 of 12 June 2013 and R335-6 CPI together R614-36 CPI):

  • an intervention request form based on the Regulation (EU) No 608/2013 of 12 June 2013 or on the code of intellectual property (to be found on the French customs website);
  • a copy of the patent;
  • the justification of his right to act (see above);
  • a technical, precise and detailed description of the authentic goods (markings, barcode, images, etc., see Order of June 29, 2015, art 2);
  • information to distinguish real products from fake ones (origins of fake, differences, etc.);
  • the contact details of the contact person (legal and technical contact, most often the IP advice of the holder).

1.5.2. Precision on the "patent" technicality

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

Therefore, it is important to describe the distinctive features visible counterfeit products, more than the characteristics of the patent (eg "the allegedly counterfeit phones have a curved back side without logo" rather "the counterfeit phones have a 4G chip implementing the data compression method xxx“).

We must not forget that the customs officer is not a technician: the characteristics must be obvious.

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

Section 1.6. Send the request

The request must be sent to the email address contrefac@douane.finances.gouv.fr and, for documents bearing a signature, by post toOrder of June 29, 2015, art 1):

Directorate General of Customs and Indirect Rights Bureau E1
Tariff and commercial policy
Intellectual Property and Counterfeiting Section
11, rue des deux Communes 93558 MONTREUIL cedex

Section 1.7. Decision to accept / reject the application

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

Chapter 2. Customs deductions

Section 2.1. The restraint itself

2.1.1. Principle

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

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

The public prosecutor is also warned in the context of a customs deduction according to the CPI (L614-32 ICC2nd paragraph).

In the context of a customs deduction according to the CPI, are sent to the applicant:

  • the nature / quantities of products (L614-32 ICC3rd paragraph);
  • pictures (L614-32 ICC3rd paragraph);
  • upon request of the applicant and for the purposes of taking legal action (Article L614-32 ICC, 6th paragraph, that is, you can not use this information to deal directly with the counterfeiter):
    • the name and address of the recipient,
    • the name and address of the sender,
    • the name and address of the declarant,
    • the name and address of the holder of the goods,
    • Originally,
    • the provenance, and
    • the destination of the goods.

It is nice to see that Article 17.4 of the Regulation (EU) No 608/2013 of 12 June 2013 proposes provisions almost identical for the EU withholding (with the exception of a notable provision ... but I'll let you find it):

  • the nature / quantities of products;
  • pictures ;
  • upon request of the applicant and for a limited number of uses (see Article 21.4 of Regulation (EU) No 608/2013 of 12 June 2013, civil or criminal procedure, negotiating with the counterfeiter, etc.):
    • the name and address of the recipient,
    • 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,
    • Originally,
    • the provenance, and
    • the destination of the goods.

So ? You saw the difference?

Before 2016, the customs services systematically asked to certify that the information provided would only be usedfor the purposes of taking legal action. Nevertheless, since the update of their form (Request for the lifting of the customs secrecy - Annex 5), the wording is more permissive: "I also agree not to use this information for other purposes than those provided for by the regulations in force” .

2.1.2. Anticipated release

In the context of an EU hold only, the holder of the goods may request an early release of the customs services (Articles 24.1 and 24.2, Regulation (EU) No 608/2013 of 12 June 2013) if :

  • a deposit is paid;
  • a judge has not yet ordered interim measures;
  • the customs formalities were correctly carried out.

2.1.3. Storage costs

Customs may ask the applicant to reimburse storage costs (Article 29.1, Regulation (EU) No 608/2013 of 12 June 2013, L614-32 ICC5th paragraph and R335-15 CPI together R614-36 CPI).

Section 2.2. 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).

The customs administration may take samples:

  • in the context of a CPI deduction, the taking of samples will consist in the taking of 2 samples: one for customs, one for the holder of the goods, no sample is given to the applicant (R614-37 CPI),
  • in the context of an EU withholding, the applicant can be given a sample "on request of the latter and for the sole purpose of analysis and to facilitate the continuation of the procedure"(Article 19.2, Regulation (EU) No 608/2013 of 12 June 2013).

Section 2.3. The position of the applicant

2.3.1. Principle

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

This statement is made:

  • justifying (L614-32 ICCFourth paragraph or Article 23.5 Regulation (EU) No 608/2013 of 12 June 2013):
    • or of provisional measures decided by the TGI of Paris,
    • either to have used the civil way or the correctional way (and to have constituted the guarantees required),
    • or to have filed a complaint with the public prosecutor.
  • requesting the destruction of the goods (see below, L614-36 CPI))

2.3.2. Precision on the delay

Funny thing ... the "10 working days" deadline is not calculated in the same way if the deduction was made with the community text or the French text:

2.3.3. prorogation

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

This only applies to non-perishable products.

Section 2.4. Destruction of goods

2.4.1. Principle

Counterfeit goods may be destroyed without the intervention of the judge:

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

This procedure avoids lengthy and costly lawsuits.

2.4.2. Destruction costs

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

2.4.3. Special case of small shipments of non-perishable food

In the EU framework, if the applicant explicitly referred to this procedure in his application and that products covered by his application are found in "small shipments"(Ie postal items of less than 3 items or weighing less than 2 kg, item 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 deduction.

Only notification is made to the holder of the goods to warn him that destruction is envisaged (Article 26.3, Regulation (EU) No 608/2013 of 12 June 2013).

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

Section 2.5. In case of refusal destruction

If the applicant considers that the goods are counterfeit, but the holder of the goods objects to the destruction (L614-36 CPI, III, Article 23.3, Regulation (EU) No 608/2013 of 12 June 2013), the applicant is notified.

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

  • to seize a judge:
    • by civil or correctional means to bring an action for infringement,
    • possibly in urgent proceedings to request precautionary measures,
  • or file a complaint with the public prosecutor.

One Comment:

  1. Hello
    in paragraph 1.1,
    the code of intellectual property (L613-32 CPI1 in particular as regards patents).
    it is actually L614-32 of the CPI
    Congratulations for your site !
    Antoine

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