Stina Pilotti, principal and digital and commercial head for Sweden at Rouse, provides advice on how to collaborate effectively with customs officials at the ports in Sweden. She explores the frontline of brand protection in the country and provides a guide on how to successfully monitor for – and enforce against – counterfeit and grey market goods.
Can rights holders record trademark and brand-related IP information with Customs and, if so, how?
Holders of trademark, copyright, design and patent rights are strongly encouraged to submit an application for action (AFA) at Swedish Customs to ease cooperation and record information with the authorities. Based on the information provided by rights holders, Customs is more likely to identify suspected counterfeit goods and, hence, take necessary action.
The AFA can be a national or an EU application depending on the IP right(s) on which it is based. An EU AFA granted in one EU member state has the same legal status in all other member states, where action was requested for in the application. The AFA must be submitted online via the IP Enforcement Portal. In the form, rights holders are required to include information about the type of right (eg, a national trademark, an international registered trademark, a copyright or related right, or a patent as provided for by EU law), and the member states where customs action is requested. Attachments (eg, product information, photos and manuals) can be included in the application. Rights holders and their representatives must hold a valid Economic Operators Registration and Identification (EORI) number to be able to file an AFA.
Once a rights holder has applied for an AFA, Customs can stop any consignment from outside the European Union if it is suspected of containing counterfeit goods. Even without an AFA, Customs still has the authority to seize suspicious goods.
Furthermore, Customs is constantly cooperating with other Swedish public authorities against piracy, counterfeiting prevention and activities to raise awareness and knowledge among rights holders, companies and consumers. Authorities connected to this network include:
- the Swedish Intellectual Property Office;
- the Police Office; and
- the Swedish Medical Products
Rights holders, companies and consumers are always encouraged to contact Customs if faced with potential counterfeit goods. Also, as mentioned above, rights holders and importers are strongly encouraged to submit an AFA to streamline Customs’ work in preventing counterfeit goods.
Are copyright registrations also registerable with Customs?
Please see the above answer. An economic operator established outside the European Union must be assigned an EORI number if it intends to file an AFA. Furthermore, the types of rights to which such an application refers include copyrights, so a US copyright registration can be registered with Customs.
Can brand owners send customs officials a product information guide or any additional materials to assist them in identifying genuine products?
When submitting an AFA, you can add relevant attachments (eg, product guides, photos and manuals), preferably in a digital form since the AFA is submitted online.
What is the typical process for confiscation or further investigation in the event that customs officials identify potentially counterfeit goods?
Should Swedish Customs confiscate imported goods, the authority will contact both the importer and the rights holder in question. The importer and the rights holder must report back to Customs within 10 days.
Customs will destroy the goods once they are confirmed to be counterfeits, if the person who bought the goods has not contested the destruction. Customs will contact rights holder of the origin product. Thereafter, the rights holder can decide whether to file a lawsuit against the buyer. Another option is for the buyer to agree to the product being destroyed and pay damages to the rights holder.
Notwithstanding the above, Customs cannot intervene against goods that are parallel imported into Sweden, nor goods brought into Sweden as a part of a traveller’s personal luggage, except if Customs believes that the goods were brought here for commercial purposes.
How will brand owners typically be contacted when suspicious or counterfeit goods are identified?
Depending on the information provided in the AFA document, rights holders and/or importers will be contacted via either email or phone.
Are there any time-sensitive considerations that brand owners should be aware of when dealing with customs-related IP enforcement?
As mentioned above, once the rights holders and/or importers have been contacted by Swedish Customs, they have 10 days to respond.
What are the potential costs involved in working with customs officials to protect a brand’s intellectual property?
Rights holders may be liable for the destruction of the confiscated goods.
Can you provide examples of successful collaborations between international companies and customs authorities that have resulted in tangible results?
In Patent and Market Court of Appeal Case B 283-22, the defendants were charged for importing a large quantity of counterfeit cartons bearing detergent brands. The main question for the court was whether the import constituted a completed trademark infringement, or an attempted or preparatory trademark infringement.
According to the court, the defendants were guilty of preparing for trademark infringement. The trademarks visible on the cartons had not yet created a direct connection between the affixed characteristics and a certain product.
In Patent and Market Court of Appeal Case PMT 6325- 16,the defendant had imported a large quantity of counterfeit Rolex watches into Sweden for commercial purposes. The defendant was forced to pay damages and the watches were destroyed.
For further information, please contact:
Stina Pilotti, Rouse
spilotti@rouse.com
