Customs detention of articles suspected of infringing intellectual property rights (IPRs) can be an incredibly useful tool for IPR owners in the battle against counterfeit goods.  This was especially the case with the EU Customs Regulations, under which an applicant can submit an application requesting the customs authorities of one or more EU Member States to take action with respect to goods suspected of infringing an IPR (known as an AFA, ‘Application for Action’).

Statistics published last year by the European Commission show that in 2018 more than 27 million articles suspected of violating IPR with a genuine value of more that EUR 740 million were detained in almost 70 000 registered detention cases.  The top categories of detained articles were cigarettes (15%), toys (14%), packaging material (9%), labels, tags and stickers (9%) and clothing (8%).

So what is happening with the system after Brexit?  

On 17 August 2020, the European Commission published an updated notice and confirmed that EU rules on customs enforcement of IPRs will no longer apply to the UK.

In effect, this means that:

  • UK customs authorities will no longer be able to deal with requests to respond to allegedly infringing goods under the Customs Regulation. Any applications submitted before the end of the transition period in any EU Member State but which ask the UK customs authorities to take action, will no longer apply in the UK.
  • Any decisions by UK customs in relation to such requests will no longer be valid. Applicants must instead submit a fresh request to an EU Member State for a new decision.
  • A decisions given before the end of the transition period by EU Member States (other than the UK) will remain valid in the relevant member state, whether or not they covered the UK.
  • Certain sections of the Customs Regulation will continue to apply in Northern Ireland after the transition period, meaning that UK customs decisions made in respect of Northern Ireland will not apply in the EU, but will be valid in Northern Ireland in relation to any EU IPRs and decisions made in EU Member States may include Northern Ireland, even after the transition period.

Post-Brexit, IPR owners should review existing and possible future AFAs as a new filing strategy may be necessary: 

  • To detain goods which potentially infringe UK IPRs as they enter the UK, IPR owners should file new border detention applications in the UK based on national IPRs; and
  • To detail goods which potentially infringe unitary EU IPRs as they enter the EU (when an EU AFA was previously filed with UK customs), IPR owners should file a new EU AFA with customs authorities in an EU Member State.

Many thanks to Emily Costello for her research assistance in preparing this blog post.