Customs action against products that infringe IP rights in the EU is about to change, and brands need to consider how they are affected.

One of the frontline defences against infringements has been customs enforcement. Acting as a cheap and efficient way to stop infringing goods entering the market, applications for customs action (AFAs) are a highly effective tool in a brand owner’s arsenal.

Brands can submit a Union AFA to request that the customs authorities across the EU seize goods which potentially infringe EU wide IP rights (such as EU trade marks and Community Registered Designs). There is no fee for an application, although rights holders reimburse costs incurred by customs in the detention and, often, the destruction of goods. Once detained the party responsible often agrees to the destruction of the goods (or fails to respond). A court will only become involved to determine whether the goods are infringing if is there is an objection to the destruction. The current EU AFA system is therefore an attractive and cost effective option to stem the flow of infringing goods across the EU.

All great. Except, of course, the UK is about to complete its departure from the EU, and with it, it’s participation in EU wide IP arrangements.

The EU has recently issued a notice confirming the lay of the land for Union AFAs following the end of the transition period. As one might expect, it will no longer be possible to submit a Union AFA via HMRC, it must instead be submitted in one of the remaining EU member states. Crucially, any Union AFAs that have been submitted in the UK will no longer be valid in a member state, although they will continue to operate within the UK until they expire. Even though AFAs only last for a year (they can be renewed) brands don’t want to be caught short by letting Union AFAs become invalid.

To ensure they can continue to benefit from this economical method of brand protection, brands should be prepared to resubmit their Union applications in an EU member state and make a new UK AFA application to HMRC when the current Union AFA reaches its expiry.