Is Custom Recordal of Intellectual Property Rights (IPRs) available in Germany?
Is Custom Recordal of IPRs compulsory in Germany?
Is it an effective measure to stop the infiltration of illegal and counterfeit products in Germany?
Which law forms the legal basis for Custom Recordal of IPRs (Border Control Measures) in Germany?
The Regulation (EU) No 608/2013 forms the legal basis for Custom Recordal of IPRs (Border Control Measures) in Germany. Border seizure under German law is codified in the legislation regulating the respective intellectual property rights, for instance, in Section 146 of the Trademark Act, Section 142a of the Patent Act, Section 25a of the Utility Model Act, Section 55 of the Design Act, Section 40a of the Plant Variety Protection Act, and Author's Rights in Section 111b Copyright Act.
Is Custom Recordal of IPRs effective on import or export of goods or both?
Custom Recordal of IPRs is effective on the import, export, and re-export of goods.
What is the role of the customs department/authority? (Kindly give 2-3 points)
The customs authorities only carry out a summary inspection to establish the existence of an infringement of an IPR, i.e., they do not conduct a detailed, material inspection, merely a simplified check. In the case of technical property rights, in particular, the customs authorities often do not have the necessary resources to check for infringements more closely. As soon as the customs authorities suspect an infringement of an IPR, they detain the goods and inform the customs declarant and/or the owner of the goods as well as the applicant about the seizure.
Is there a procedure to record IP with the customs department/authority? If yes, then kindly explain it in brief.
The Regulation provides for two different tracks: one is applicable to the Community rights with a Community-wide effect (Article 4 of the Regulation), and the other is applicable to national rights. The application should be made to: Zentralstelle Gewerblicher Rechtsschutz (Bundesfinanzdirektion Südost), Sophienstraße 6,80333 München.
What documents are to be submitted along with the application for Custom Recordal of IPRs?
The following details may be needed:
The name and address of a legal or technical person, usually the lawyer handling the filing procedure. This person must be vested with a power of attorney. This is also the first contact person in the event that customs detects suspect goods.
An accurate and detailed technical description of the goods - i.e., sufficient information to enable customs to distinguish authentic/original products from suspected goods. The right holder should add a list of those companies authorised to sell original goods.
Available information on potential infringers and infringing goods. This information should be constantly updated.
Information (if available) regarding the particularities of the packaging; schedule of arrival or departure; means of transportation; identity of the importers, exporters and holders of suspect goods; and details of the distribution channels used by potential infringers, including information concerning upcoming trade shows. Accordingly, a list of companies that potentially import suspect products into the European market, as well as those companies potentially receiving such products, should be added and constantly updated.
The effectiveness of an application for action by the customs depends on the accuracy and thoroughness of the information that the customs authorities receive regarding the goods and the potential infringer. The more information is available to the customs - the greater are the chances that the infringing items will be detected.
Is the applicant required to execute a bond (against all liabilities and to bear the costs towards destruction, demurrage, and detention charges incurred till the time of destruction or disposal) with the customs department/authority for Custom Recordal of IPRs?
What is the time frame for the customs department/authority to notify the applicants whether their application (for custom recordal of IPRs) is registered or rejected?
Does the customs department/authority have a centralized system or the Custom Recordal is required to be done with each port of entry in Germany by land, sea, and air?
Yes, it is centralized.
Is there an online system for Custom Recordal in Germany?
Yes, through the ZRG web portal (https://www.zgr-online.zoll.de/zgr/).
What is the official fee for Custom Recordal in Germany?
Except for the costs related to the storage, handling, and destruction of detained goods, there are no fees to be paid to the customs authorities for the application procedure. The preparation of the application will involve some legal costs and so will the maintenance of the detention measures, depending on how many different seizures the customs effectively makes and on how many follow-up court proceedings may be necessary.
What is the term of Custom Recordal of IPRs? Can it be further renewed?
This period shall not exceed 01 year, but on expiration, the ZGR may extend the period as per request of the rights holder.
Does the customs department/authority have a right to conduct raids and seize the counterfeit goods within Germany?
In which scenario does the customs department/authority suspend the clearance of imported goods?
If the customs authority detects that the goods are infringing in nature, according to the information found on the customs intranet, it will detain these goods.
Who bears the liabilities and expenses related to suspension of the release of infringing goods?
The applicant is liable to pay compensatory damages for goods destroyed where applicable, unless the goods were to be destroyed in any case by reason of the rights infringement.
Is the IP rights holder authorized to examine the goods, the clearance of which has been suspended?
Is the IP rights holder authorized to request the information about the personal details of the importer and additional crucial piece of information concerning the consignment, which has been suspended from clearance?
Can the importer or the authorized representative of the goods, which have been suspended from clearance, request the information of the IP rights holder in question?
Within what timeframe the IP rights holder needs to confirm whether the goods are counterfeit or original after suspension?
The applicant then has 10 days from notification of the seizure (in the case of perishable goods, just 03 days) to notify the customs authorities of the infringement of the right and to initiate the legal proceedings.
Is the IP rights holder required to produce an injunction order or evidence of court proceedings to detain the goods?
If the answer to the above question is 'Yes,' then what is the deadline to do so?
Does the IP rights holder need to pay an additional bond for the detention of goods?
If the answer to the above question is 'Yes,' then to what extent and how is the valuation calculated?
For the time being, the ZGR requires a bond of EUR 10,000 from a bank, which is officially accredited to operate and provide financial services within German territory. If it is too difficult to find a suitable bank, the rights holder may also deposit the amount into a trusted account with any deposit agency of a German Court.
In the scenario where the goods detained or seized are found to be infringing the IPRs of the IP rights holder in question, what steps does the customs department/authority take?
The destruction proceeding is initiated whereby:
The rights holder confirms within 10 working days from the notification of detention in writing that, in his conviction, the suspected goods infringe the IP right, and indicates his or her agreement to their destruction. To require an expressed conviction from the rights holder that the suspected goods indeed infringe the concerned IP right leverages a sense of responsibility and challenges the rights holder to a serious review of the situation.
The declarant or the holder of the goods agrees in writing to the customs, also within 10 working days, to destroy the goods. Where the declarant or the holder of the goods has not confirmed his or her agreement to destroy the goods, nor notified any opposition thereto, to the customs authorities within those deadlines, the customs authorities may deem the declarant or the holder of the goods to have confirmed his or her agreement to destroy those goods. Accordingly, this agreement is presumed if the holder or owner of the goods has not explicitly objected to the destruction within the indicated 10-day period.
If this does not happen amicably, the court proceeding must be initiated.
Does the customs authority invite the rights holder and importer to join the proceedings? Are there any consequences of failure to join such proceeding, if any?
Yes, where there is no amicable settlement of maters, the rights holder must initiate court proceedings within 10 working days from the receipt of the notification of detention. This deadline can be extended further by 10 working days. Failing to join the same shall result in release of goods from suspension.
Before disposal/destruction of infringing goods, does the rights holder need to submit a ‘no objection’ or concurrence document?
Are there any disadvantages of Custom Recordal of IPRs in Germany? If yes, then kindly give 2-3 points?
If an IP rights holder is not satisfied with the action taken by the customs department/authority, can he/she initiate separate legal proceedings to enforce his/her IP rights?
To establish if the goods are counterfeit before the court of justice, will the affidavit by the IP rights holder suffice or any other documentary requirement is there?
Upon conclusion of proceedings before the Court of Justice, what are the possible remedies awarded by the court?
The possible remedies awarded by the court include damages and destruction of goods.
Is the rights holder under an obligation to inform customs authority when his Intellectual Property Right ceases to be valid/ he ceases to be the owner of such IPR?