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Custom Recordal of IPRs in Germany

Germany

Custom Recordal of IPRs
Yes
No
Yes
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.
Custom Recordal of IPRs is effective on the import, export, and re-export of goods.
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.
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.
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.
Yes
Yes, it is centralized.
Yes, through the ZRG web portal (https://www.zgr-online.zoll.de/zgr/).
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.
This period shall not exceed 01 year, but on expiration, the ZGR may extend the period as per request of the rights holder.
Yes
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.
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.
Yes
Yes
Yes
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.
No
N/A
Yes
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.
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.
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.
N/A
No
N/A
The possible remedies awarded by the court include damages and destruction of goods.
No