Customs detentions now trigger fees charged to right holders!

The decree of 11 December 2018, which lays down the methods for calculating the costs of storing, handling, transporting and destroying goods suspected of infringing IP rights, provides for fees arising from certain measures taken by the customs authorities. Right holders will now have to take these new fees into account in their defense strategy.

Requesting the intervention of the customs authorities is an often used remedy in the fight against counterfeiting and the prevention of possible intellectual property infringements.

To this end, the holder of the IP right (trademark, design right, copyright and related rights, trade name, topography of semiconductor product, patent, utility model, geographic indication, designation of origin, plant variety protection, supplementary protection certificate), or an authorized third party, may file a request for intervention based on Regulation (EU) no. 608/2013 and/or a request for intervention based on the French Intellectual Property Code (Article L.716-8 of the Intellectual Property Code), which, when granted, results in the implementation of a surveillance mechanism both within the national territory and at the borders of all or some of the EU Member States. During such procedures, the customs authorities may carry out various actions, such as the storage, handling, transport and destruction of infringing or potentially infringing goods.

Until 1 January 2019, the French administration did not charge any fees for the actions undertaken by the customs authorities on behalf of rights holders. However, the decree of 11 December 2018, which lays down the methods for calculating the costs of storing, handling, transporting and destroying goods suspected of being counterfeit, introduces some changes in this regard.

The decree sets forth the following fixed fee schedule:

• Processing fee: EUR 30
• Fee for storage of an entire cargo or for the storage of a portion of a batch of goods, from the notice of the detention to the destruction of the goods: EUR 40
• Destruction up to 20 kg: EUR 20
• Destruction beyond 20 kg: EUR 60

It should also be noted that the decree provides for an invoicing of actual costs where the infringing goods exceed certain thresholds (e.g., relating to the weight, size and dangerousness of the seized goods), thus increasing the above-mentioned fees.

Lastly, no fee is charged for storages carried out free of charge by the declarant or the right holder or for simplified destruction procedures organized by the right holder, under customs surveillance.

Going forward, right holders will therefore have to factor in the fees thus incurred in implementing such procedures.

One can still hope that these additional costs will not be an obstacle to anti-infringement cooperation between rights holders and customs services. Indeed, as seizures very often concern rather small volumes of goods, holders of infringed trademarks, designs and patents will have to face compounding fees generated by the successive interventions of the authorities.

Natalia Moya Fernandez and Farah Agrebi