New EU Regulation Strengthens Customs Authorities’ Ability to Take Action against Counterfeits

by K&L Gates LLP

Customs authorities in the European Union (“EU”) countries are being given new enforcement tools with the adoption on 1 January 2014 of Council Regulation No. 608/2013 (the “New Regulation”). The New Regulation provides broader options for customs authorities’ enforcement and adds new procedural options for actions on cross-border goods. Specifically, the New Regulation expands the scope of protection of rights from, inter alia, trademarks, copyrights, and patents, to also include utility models, business names, and semiconductor topographies. Further, a specialized procedure for giving notice to recipients of small consignments of infringing goods has been introduced to deal with the large number of counterfeit shipments moving across EU national borders through postal systems. Among other notable changes, the New Regulation provides a compulsory and simplified procedure for destroying goods that infringe intellectual property rights (without the need to go to court) and simplifies and speeds up proceedings by creating a uniform database of infringements to make channels of communication between the customs authorities more efficient. Importantly, the New Regulation requires that rights holders file new applications for action by customs authorities when existing applications expire.

System for EU Cross-Border Anticounterfeit Enforcement
Customs administrations play an essential role in the fight against counterfeiting in the EU market. Intellectual property rights holders (“rights holders”) can take steps to defend their rights by lodging “applications for action” with customs authorities in the EU. These applications may provide additional information to customs authorities on rights holders’ trademarks, designs, patents, or other IP rights. If action in only one EU Member State is desired, applicants can submit a “national application” by applying for action by the customs authorities of the Member State in which the application for action is lodged. This application can also be used for all types of intellectual property rights. In addition, owners of Community trademarks, Community design rights, Community plant variety rights, or designation of origin or geographical indication protected by the European Community may alternatively use the “Community application.” A Community application permits the applicant to request assistance by the customs authorities in multiple Member States.

Adoption and Scope of the New Regulation
On 29 June, the Official Journal of the EU published the New Regulation, which replaces Council Regulation No. 1383/2003, in force since 2003. Work on the revision, aimed at increasing the level of protection in the EU market from the influx of pirated and counterfeit goods, has been ongoing since 2008. During this process, IP rights holders have often highlighted the need to improve the enforcement of intellectual property rights at the borders. The changes contained in Regulation No. 608/2013 are, therefore, primarily intended to strengthen enforcement of the regulations and to expand the scope of the intellectual property rights they cover.

As with the existing regulation, the New Regulation applies to imported goods declared for release into free circulation, for export or reentry goods, shipments subject to a suspension procedure, as well as goods that are placed in a bonded warehouse in the customs territory of the EU. Importantly, the New Regulation expands customs authorities’ duty to enforce intellectual property rights to include postal deliveries (see the “Small consignments”section below).

What is not covered by the New Regulation
While sections on parallel trade and goods made by an authorized entity as original goods but in excess of the previously agreed amount were discussed, and provisions were included in early drafts of the New Regulation, the Council and the European Parliament decided not to enter these provisions in the final version of the New Regulation. Moreover, goods carried by passengers in their personal baggage continue to be excluded from the New Regulation, provided that such goods are for their personal use—and subject to local interpretations of such personal use. Goods that are only transiting EU territory are also not covered by the New Regulation, unless there is a substantial likelihood that the goods will be rerouted for sale in the EU market.

Broader scope of rights protected
One of the major changes under the New Regulation is the expansion of protection for additional types of intellectual property. Under the current regulation, protection extends to trademarks, industrial designs, copyrights, patents, supplementary protection certificates, plant variety rights, and geographical indications. Protection under the New Regulation will also extend to trade names (if protected under national law), semiconductor topographies, and utility models, as well as devices that are primarily intended for circumvention of technological measures, including components infringing any copyright or any related right. Inclusion of these additional intellectual property types will give rights holders additional bases to seek assistance from customs authorities.

Eligibility to file applications
Under the current law, only the intellectual property rights holder, its representative, or an authorized user may submit an application for customs action. Under the New Regulation, a broader set of entities is authorized to submit an application for action with customs authorities, including intellectual property collective rights management bodies, professional representatives’ bodies, groups of producers of products bearing geographical designations, representatives of such groups and businesses entitled to use a geographical designation, and control bodies or authorities for such a geographical designation. The New Regulation also introduces a distinction between persons entitled to file an application with national customs authorities and those entitled to file an application with EU customs authorities, with a third category of persons authorized to submit both types of applications.

Small consignments–destruction of postal shipments
The New Regulation introduces a novel procedure for noticing of and destruction of goods in small consignments. This change has been made in response to the growing number of infringements of intellectual property rights carried out by post, especially in the field of pharmaceuticals. Under the procedure, customs authorities inform the importer or recipient of the postal shipment of customs’ intent to destroy the shipment, and the party has 10 days to present its position, including its consent to the destruction. If the importer or recipient of the postal goods has not raised an objection within 10 days, the customs authorities may carry out the destruction by deeming such consent as implied. If an objection is raised by the importer or recipient of the goods, after completing the formalities, the customs authorities release the goods if they have not received information from the IP rights holder on the initiation of proceedings to determine whether an intellectual property right has been infringed.

Use of simplified destruction procedure made mandatory for Member States
Current law provides a simplified procedure for destruction of counterfeit or pirated products. However, use of this procedure has been optional and up to the discretion of the individual EU Member States. The New Regulation makes this procedure compulsory. Under this procedure, customs authorities will now be able to destroy goods detained at the border for infringement without the need for a judicial decision confirming the violation, if both the IP rights holder and the importer (in this case tacit consent may apply) provide their written consent to the destruction within 10 days.

Consent to the destruction of the goods is an admission that the goods infringe intellectual property rights, and under this procedure, parties may be able to avoid additional court costs and liability. If the importer does not consent to the destruction of the goods, the IP rights holder may initiate proceedings to determine whether a violation of intellectual property rights has occurred. The importer or recipient’s tacit consent—i.e. the absence of any explicit objection—within this 10-day period may, however, raise further procedural issues regarding the burden of proof, insofar as destructions may be performed by customs authorities without any judicial decision.

Information exchange between national authorities
To simplify and significantly expedite procedures, the New Regulation introduces methods for information exchange between national customs authorities and also identifies the specific types of data and information to be exchanged. A central electronic database will be used to exchange information on decisions on rights holders’ applications for action as well as national customs authorities’ actions on infringing goods. The New Regulation mandates that national customs authorities share information with the central database whenever they issue decisions granting applications for action, extend the period of protection for an application for action, or suspend a decision granting the application. These provisions for information exchange will enable customs authorities both to cooperate and act consistently with one another on anticounterfeiting efforts.

The costs of actions taken
The New Regulation provides that an IP rights holder reimburse the customs authorities for the costs incurred in carrying out enforcement activities. The rights holder can then apply for compensation from the infringer or importer and, where applicable, from its agents. These provisions on reimbursement of customs authorities by the IP rights holders as well as the ability to seek compensation from the infringer also apply to enforcement costs incurred in use of the simplified destruction procedure.

Current applications for action required to be refiled
Under the New Regulation all currently binding applications for action by the customs authorities granted in accordance with Regulation No. 1383/2003 will remain valid for the period specified in the applicable decisions of the customs authorities. The original application for action, however, may not be further extended; instead, a new application must be submitted under the New Regulation.

The current Regulation No. 1383/2003 will expire on 1 January 2014, after which the New Regulation No. 608/2013 will come into force. The European Commission implementing regulation for the New Regulation is still pending, but is expected to issue in the coming months.


Written by:

K&L Gates LLP

K&L Gates LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide

JD Supra Privacy Policy

Updated: May 25, 2018:

JD Supra is a legal publishing service that connects experts and their content with broader audiences of professionals, journalists and associations.

This Privacy Policy describes how JD Supra, LLC ("JD Supra" or "we," "us," or "our") collects, uses and shares personal data collected from visitors to our website (located at (our "Website") who view only publicly-available content as well as subscribers to our services (such as our email digests or author tools)(our "Services"). By using our Website and registering for one of our Services, you are agreeing to the terms of this Privacy Policy.

Please note that if you subscribe to one of our Services, you can make choices about how we collect, use and share your information through our Privacy Center under the "My Account" dashboard (available if you are logged into your JD Supra account).

Collection of Information

Registration Information. When you register with JD Supra for our Website and Services, either as an author or as a subscriber, you will be asked to provide identifying information to create your JD Supra account ("Registration Data"), such as your:

  • Email
  • First Name
  • Last Name
  • Company Name
  • Company Industry
  • Title
  • Country

Other Information: We also collect other information you may voluntarily provide. This may include content you provide for publication. We may also receive your communications with others through our Website and Services (such as contacting an author through our Website) or communications directly with us (such as through email, feedback or other forms or social media). If you are a subscribed user, we will also collect your user preferences, such as the types of articles you would like to read.

Information from third parties (such as, from your employer or LinkedIn): We may also receive information about you from third party sources. For example, your employer may provide your information to us, such as in connection with an article submitted by your employer for publication. If you choose to use LinkedIn to subscribe to our Website and Services, we also collect information related to your LinkedIn account and profile.

Your interactions with our Website and Services: As is true of most websites, we gather certain information automatically. This information includes IP addresses, browser type, Internet service provider (ISP), referring/exit pages, operating system, date/time stamp and clickstream data. We use this information to analyze trends, to administer the Website and our Services, to improve the content and performance of our Website and Services, and to track users' movements around the site. We may also link this automatically-collected data to personal information, for example, to inform authors about who has read their articles. Some of this data is collected through information sent by your web browser. We also use cookies and other tracking technologies to collect this information. To learn more about cookies and other tracking technologies that JD Supra may use on our Website and Services please see our "Cookies Guide" page.

How do we use this information?

We use the information and data we collect principally in order to provide our Website and Services. More specifically, we may use your personal information to:

  • Operate our Website and Services and publish content;
  • Distribute content to you in accordance with your preferences as well as to provide other notifications to you (for example, updates about our policies and terms);
  • Measure readership and usage of the Website and Services;
  • Communicate with you regarding your questions and requests;
  • Authenticate users and to provide for the safety and security of our Website and Services;
  • Conduct research and similar activities to improve our Website and Services; and
  • Comply with our legal and regulatory responsibilities and to enforce our rights.

How is your information shared?

  • Content and other public information (such as an author profile) is shared on our Website and Services, including via email digests and social media feeds, and is accessible to the general public.
  • If you choose to use our Website and Services to communicate directly with a company or individual, such communication may be shared accordingly.
  • Readership information is provided to publishing law firms and authors of content to give them insight into their readership and to help them to improve their content.
  • Our Website may offer you the opportunity to share information through our Website, such as through Facebook's "Like" or Twitter's "Tweet" button. We offer this functionality to help generate interest in our Website and content and to permit you to recommend content to your contacts. You should be aware that sharing through such functionality may result in information being collected by the applicable social media network and possibly being made publicly available (for example, through a search engine). Any such information collection would be subject to such third party social media network's privacy policy.
  • Your information may also be shared to parties who support our business, such as professional advisors as well as web-hosting providers, analytics providers and other information technology providers.
  • Any court, governmental authority, law enforcement agency or other third party where we believe disclosure is necessary to comply with a legal or regulatory obligation, or otherwise to protect our rights, the rights of any third party or individuals' personal safety, or to detect, prevent, or otherwise address fraud, security or safety issues.
  • To our affiliated entities and in connection with the sale, assignment or other transfer of our company or our business.

How We Protect Your Information

JD Supra takes reasonable and appropriate precautions to insure that user information is protected from loss, misuse and unauthorized access, disclosure, alteration and destruction. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. You should keep in mind that no Internet transmission is ever 100% secure or error-free. Where you use log-in credentials (usernames, passwords) on our Website, please remember that it is your responsibility to safeguard them. If you believe that your log-in credentials have been compromised, please contact us at

Children's Information

Our Website and Services are not directed at children under the age of 16 and we do not knowingly collect personal information from children under the age of 16 through our Website and/or Services. If you have reason to believe that a child under the age of 16 has provided personal information to us, please contact us, and we will endeavor to delete that information from our databases.

Links to Other Websites

Our Website and Services may contain links to other websites. The operators of such other websites may collect information about you, including through cookies or other technologies. If you are using our Website or Services and click a link to another site, you will leave our Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We are not responsible for the data collection and use practices of such other sites. This Policy applies solely to the information collected in connection with your use of our Website and Services and does not apply to any practices conducted offline or in connection with any other websites.

Information for EU and Swiss Residents

JD Supra's principal place of business is in the United States. By subscribing to our website, you expressly consent to your information being processed in the United States.

  • Our Legal Basis for Processing: Generally, we rely on our legitimate interests in order to process your personal information. For example, we rely on this legal ground if we use your personal information to manage your Registration Data and administer our relationship with you; to deliver our Website and Services; understand and improve our Website and Services; report reader analytics to our authors; to personalize your experience on our Website and Services; and where necessary to protect or defend our or another's rights or property, or to detect, prevent, or otherwise address fraud, security, safety or privacy issues. Please see Article 6(1)(f) of the E.U. General Data Protection Regulation ("GDPR") In addition, there may be other situations where other grounds for processing may exist, such as where processing is a result of legal requirements (GDPR Article 6(1)(c)) or for reasons of public interest (GDPR Article 6(1)(e)). Please see the "Your Rights" section of this Privacy Policy immediately below for more information about how you may request that we limit or refrain from processing your personal information.
  • Your Rights
    • Right of Access/Portability: You can ask to review details about the information we hold about you and how that information has been used and disclosed. Note that we may request to verify your identification before fulfilling your request. You can also request that your personal information is provided to you in a commonly used electronic format so that you can share it with other organizations.
    • Right to Correct Information: You may ask that we make corrections to any information we hold, if you believe such correction to be necessary.
    • Right to Restrict Our Processing or Erasure of Information: You also have the right in certain circumstances to ask us to restrict processing of your personal information or to erase your personal information. Where you have consented to our use of your personal information, you can withdraw your consent at any time.

You can make a request to exercise any of these rights by emailing us at or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

You can also manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard.

We will make all practical efforts to respect your wishes. There may be times, however, where we are not able to fulfill your request, for example, if applicable law prohibits our compliance. Please note that JD Supra does not use "automatic decision making" or "profiling" as those terms are defined in the GDPR.

  • Timeframe for retaining your personal information: We will retain your personal information in a form that identifies you only for as long as it serves the purpose(s) for which it was initially collected as stated in this Privacy Policy, or subsequently authorized. We may continue processing your personal information for longer periods, but only for the time and to the extent such processing reasonably serves the purposes of archiving in the public interest, journalism, literature and art, scientific or historical research and statistical analysis, and subject to the protection of this Privacy Policy. For example, if you are an author, your personal information may continue to be published in connection with your article indefinitely. When we have no ongoing legitimate business need to process your personal information, we will either delete or anonymize it, or, if this is not possible (for example, because your personal information has been stored in backup archives), then we will securely store your personal information and isolate it from any further processing until deletion is possible.
  • Onward Transfer to Third Parties: As noted in the "How We Share Your Data" Section above, JD Supra may share your information with third parties. When JD Supra discloses your personal information to third parties, we have ensured that such third parties have either certified under the EU-U.S. or Swiss Privacy Shield Framework and will process all personal data received from EU member states/Switzerland in reliance on the applicable Privacy Shield Framework or that they have been subjected to strict contractual provisions in their contract with us to guarantee an adequate level of data protection for your data.

California Privacy Rights

Pursuant to Section 1798.83 of the California Civil Code, our customers who are California residents have the right to request certain information regarding our disclosure of personal information to third parties for their direct marketing purposes.

You can make a request for this information by emailing us at or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

Some browsers have incorporated a Do Not Track (DNT) feature. These features, when turned on, send a signal that you prefer that the website you are visiting not collect and use data regarding your online searching and browsing activities. As there is not yet a common understanding on how to interpret the DNT signal, we currently do not respond to DNT signals on our site.

Access/Correct/Update/Delete Personal Information

For non-EU/Swiss residents, if you would like to know what personal information we have about you, you can send an e-mail to We will be in contact with you (by mail or otherwise) to verify your identity and provide you the information you request. We will respond within 30 days to your request for access to your personal information. In some cases, we may not be able to remove your personal information, in which case we will let you know if we are unable to do so and why. If you would like to correct or update your personal information, you can manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard. If you would like to delete your account or remove your information from our Website and Services, send an e-mail to

Changes in Our Privacy Policy

We reserve the right to change this Privacy Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our Privacy Policy will become effective upon posting of the revised policy on the Website. By continuing to use our Website and Services following such changes, you will be deemed to have agreed to such changes.

Contacting JD Supra

If you have any questions about this Privacy Policy, the practices of this site, your dealings with our Website or Services, or if you would like to change any of the information you have provided to us, please contact us at:

JD Supra Cookie Guide

As with many websites, JD Supra's website (located at (our "Website") and our services (such as our email article digests)(our "Services") use a standard technology called a "cookie" and other similar technologies (such as, pixels and web beacons), which are small data files that are transferred to your computer when you use our Website and Services. These technologies automatically identify your browser whenever you interact with our Website and Services.

How We Use Cookies and Other Tracking Technologies

We use cookies and other tracking technologies to:

  1. Improve the user experience on our Website and Services;
  2. Store the authorization token that users receive when they login to the private areas of our Website. This token is specific to a user's login session and requires a valid username and password to obtain. It is required to access the user's profile information, subscriptions, and analytics;
  3. Track anonymous site usage; and
  4. Permit connectivity with social media networks to permit content sharing.

There are different types of cookies and other technologies used our Website, notably:

  • "Session cookies" - These cookies only last as long as your online session, and disappear from your computer or device when you close your browser (like Internet Explorer, Google Chrome or Safari).
  • "Persistent cookies" - These cookies stay on your computer or device after your browser has been closed and last for a time specified in the cookie. We use persistent cookies when we need to know who you are for more than one browsing session. For example, we use them to remember your preferences for the next time you visit.
  • "Web Beacons/Pixels" - Some of our web pages and emails may also contain small electronic images known as web beacons, clear GIFs or single-pixel GIFs. These images are placed on a web page or email and typically work in conjunction with cookies to collect data. We use these images to identify our users and user behavior, such as counting the number of users who have visited a web page or acted upon one of our email digests.

JD Supra Cookies. We place our own cookies on your computer to track certain information about you while you are using our Website and Services. For example, we place a session cookie on your computer each time you visit our Website. We use these cookies to allow you to log-in to your subscriber account. In addition, through these cookies we are able to collect information about how you use the Website, including what browser you may be using, your IP address, and the URL address you came from upon visiting our Website and the URL you next visit (even if those URLs are not on our Website). We also utilize email web beacons to monitor whether our emails are being delivered and read. We also use these tools to help deliver reader analytics to our authors to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

Analytics/Performance Cookies. JD Supra also uses the following analytic tools to help us analyze the performance of our Website and Services as well as how visitors use our Website and Services:

  • HubSpot - For more information about HubSpot cookies, please visit
  • New Relic - For more information on New Relic cookies, please visit
  • Google Analytics - For more information on Google Analytics cookies, visit To opt-out of being tracked by Google Analytics across all websites visit This will allow you to download and install a Google Analytics cookie-free web browser.

Facebook, Twitter and other Social Network Cookies. Our content pages allow you to share content appearing on our Website and Services to your social media accounts through the "Like," "Tweet," or similar buttons displayed on such pages. To accomplish this Service, we embed code that such third party social networks provide and that we do not control. These buttons know that you are logged in to your social network account and therefore such social networks could also know that you are viewing the JD Supra Website.

Controlling and Deleting Cookies

If you would like to change how a browser uses cookies, including blocking or deleting cookies from the JD Supra Website and Services you can do so by changing the settings in your web browser. To control cookies, most browsers allow you to either accept or reject all cookies, only accept certain types of cookies, or prompt you every time a site wishes to save a cookie. It's also easy to delete cookies that are already saved on your device by a browser.

The processes for controlling and deleting cookies vary depending on which browser you use. To find out how to do so with a particular browser, you can use your browser's "Help" function or alternatively, you can visit which explains, step-by-step, how to control and delete cookies in most browsers.

Updates to This Policy

We may update this cookie policy and our Privacy Policy from time-to-time, particularly as technology changes. You can always check this page for the latest version. We may also notify you of changes to our privacy policy by email.

Contacting JD Supra

If you have any questions about how we use cookies and other tracking technologies, please contact us at:

- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.