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Customs Surveillance in Intellectual Property Matters

Written by sacha.tuillier@dreyfus.fr11/03/2025

In today’s globalized economy, the protection of intellectual property rights is essential for businesses seeking to safeguard their trademarks, innovations, and creative works. With the increasing flow of goods across borders, infringed products and infringements on trademarks, patents, and copyrights pose significant risks to legitimate rights holders. Customs authorities play a critical role in enforcing intellectual property rights by identifying and detaining suspected counterfeit goods before they enter the market.

This article explores the mechanisms of customs surveillance, detailing how customs detention operates, the legal frameworks supporting intellectual property protection, and the procedures for filing an Application for Action (AFA) with customs services. Understanding these processes allows businesses to enhance their anti-counterfeiting strategies and protect their intellectual assets effectively.

I – Understanding customs detention

What is Customs Detention? Customs detention is the process by which customs authorities intercept and hold goods suspected of infringing intellectual property rights at a country’s border. This process prevents counterfeit goods from being imported, exported, or transshipped, reducing financial and reputational damage to rights holders and ensuring consumer safety.

Customs officials may detain goods ex officio (on their own initiative) or at the request of a rights holder who has filed an Application for Action (AFA). Once detained, the rights holder is notified and given the opportunity to examine the goods and provide evidence of infringement.

Legal basis for customs detention

In the European Union, customs detention is governed by Regulation (EU) No 608/2013, which outlines procedures customs authorities must follow when seizing counterfeit or pirated goods.

Key provisions include:

  • Customs officials may intervene when they suspect an infringement of intellectual property right as trademark, patent, copyright, topographies of semiconductor products, utility models, supplementary protection certificates for medicines and plant protection products, new plant varieties, designations of origin, geographical indications and geographical denominations and design rights.
  • Goods can be detained for up to 10 working days (extendable by another 10 days in some cases) while rights holders assess the infringement.
  • If the rights holder confirms the goods are counterfeit, legal action can be pursued, including destruction of the goods.

Beyond the EU, similar regulations exist in many jurisdictions, such as the U.S. Customs and Border Protection (CBP) enforcement mechanisms under the Trade Facilitation and Trade Enforcement Act (TFTEA).

II – Protection of intellectual property rights by customs authorities

Legal framework

The enforcement of intellectual property rights at borders is an international effort supported by several legal instruments, including:

Scope of protection

Customs authorities have the power to act against various types of IP infringements, such as:

  • Trademark infringements : unauthorized use of registered trademarks on counterfeit products (ex : Fake luxury handbags bearing a registered brand’s logo).
  • Patent infringements : importation of products infringing on a granted patent (ex : Unauthorized production of pharmaceutical drugs protected by a patent).
  • Design infringements : copying of registered industrial designs without authorization (ex : Knockoff furniture replicating a well-known designer’s work).

III – Filing an application for action with customs services

Eligibility and requirements

Rights holders, including individuals, companies, and trade associations, can file an Application for Action (AFA) requesting customs authorities to monitor and intercept infringing goods.

An AFA must include:

  • Proof of Ownership: Trademark or patent certificates.
  • Technical Specifications: Unique features of the authentic goods.
  • Known Infringements: Reports of prior counterfeit activity.
  • Contact Details: Representatives must be available to assist customs.

Procedure for Submission

  1. Obtain an EORI number: Required for all customs transactions.
  2. Complete the AFA form: Available through national customs portals. In France, all the information you need is available on the Customs and Excise portal.
  3. Submit electronically: Via the IP Enforcement Portal (IPEP).
  4. Approval & implementation: Customs reviews the application, and if accepted, begins monitoring for infringements.

Duration and renewal

  • An AFA is valid for one year and must be renewed annually.
  • Renewal requires updated information on counterfeit risks and authorized suppliers.

IV – Best Practices for Enhancing Customs monitoring

To maximize customs intervention effectiveness, rights holders should:

  • Conduct regular IP audits: Ensure all trademarks and patents are up to date.
  • Train customs officials: Provide guides and images to help identify counterfeits.
  • Monitor supply chains: Collaborate with customs to track high-risk shipments.
  • Use technology: Employ blockchain and AI-based tracking for better enforcement.

Conclusion

Customs monitoring is a vital tool for protecting intellectual property rights from counterfeiting and piracy. By proactively filing an AFA, businesses can leverage customs enforcement to block the import and export of infringing goods, safeguarding their brands and innovations.

At Dreyfus Law Firm, our team of intellectual property experts is dedicated to guiding businesses through the customs enforcement process. We provide tailored support for filing AFAs, monitoring customs interventions, and enforcing rights against counterfeiters. Our global network of IP attorneys ensures comprehensive protection in multiple jurisdictions.

Dreyfus Law Firm collaborates with a global network of IP attorneys specializing in Intellectual Property.

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1 – What are the three main missions of customs?

Customs have three primary missions: • A fiscal mission: Customs collect and monitor duties, import VAT, and excise taxes, contributing to the national and European Union budget. • An economic mission: Customs facilitate and secure trade by enforcing import and export regulations while ensuring fair competition and economic competitiveness. • A protection mission: Customs combat fraud, protect consumers, and ensure national security by inspecting dangerous, prohibited, or counterfeit goods.

2 – How can intellectual property rights be protected?

The protection of intellectual property (IP) rights involves several key steps: • Registering rights: Filing a trademark, patent, or design with the appropriate offices (INPI, EUIPO, WIPO) grants exclusive rights to the owner. • Market monitoring: Implementing surveillance strategies to detect counterfeits both online and offline. • Customs enforcement: Filing an application for action with customs authorities allows them to seize suspected counterfeit goods. • Legal actions: In case of infringement, right holders can initiate legal proceedings, including seizure of counterfeit goods and civil or criminal lawsuits.

3 – What tools are available to protect intellectual property?

Several tools help reinforce IP protection: • Customs Application for Action (AFA – Action in Favor of Right Holders): This procedure enables IP owners to notify customs about suspicious goods and facilitate counterfeit seizures. • Online monitoring platforms: Various tools help identify counterfeit products sold on marketplaces and social media. • Training and awareness programs: Right holders can collaborate with customs to train officers in detecting counterfeit goods. • Cooperation with authorities: Agreements between IP owners, customs, and law enforcement enhance the fight against counterfeiting.

4 – What is the role of customs in the fight against infringement?

Customs play a crucial role in combating counterfeiting by enforcing border controls and intercepting illicit goods: • Goods inspections: Customs officers check imports and exports to identify suspicious products. • Seizures of counterfeit goods: When counterfeits are detected, customs can seize and destroy the illicit merchandise. • Collaboration with rights holders: Businesses and trademark owners can report counterfeit products to customs through the application for action process. • Awareness campaigns: Customs regularly conduct information campaigns to educate consumers and businesses about the risks of counterfeit products. Customs are a key player in intellectual property protection, working alongside businesses and authorities to secure markets and combat fraud.

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The International Trademark and the New Members of the Madrid Protocol

Written by sacha.tuillier@dreyfus.fr20/11/2024

The Madrid System, administered by the World Intellectual Property Organization (WIPO), offers businesses a simplified way to protect their trademarks internationally. With the regular addition of new member countries, such as Qatar, in May 2024, the system continues to expand, providing companies with new business opportunities in strategic territories. But how do these new memberships affect the landscape of international trademarks?

The International Trademark and Its Benefits

The Madrid System is based on two international treaties: the Madrid Agreement of 1891 and the Madrid Protocol of 1989. These two instruments allow businesses to file a single international trademark application, designating the countries where they wish to protect their mark.

However, before a company can file such an application, it must first register its mark at the national level in the country where it is established. Following the registration of the international trademark, a dependency link is created with the national mark for a period of five years. Consequently, the loss of rights on the national mark automatically results in the same loss for the international mark in all designated countries.

Through the Madrid System, businesses can benefit from uniform protection of their mark in multiple countries while reducing costs and administrative steps. A single application also simplifies the management of trademark renewals, which are valid for a period of ten years and can be renewed indefinitely.

Qatar’s Accession and Its Implications for International Companies

Qatar became the 115th member of the Madrid Protocol on May 3, 2024, marking a new phase for the Gulf region. It is the fourth country out of six Gulf Cooperation Council (GCC) members to join. This accession allows Qatari companies to register their trademarks internationally through a single procedure while facilitating access to foreign markets. Conversely, foreign businesses can now more easily protect their trademarks in Qatar by designating the country directly in their international trademark application.

For international businesses, the accession of new countries like Qatar to the Madrid Protocol opens up unprecedented commercial opportunities in markets that were previously less accessible. It enables the extension of trademark protection in strategic geographical areas, particularly given the rapid economic growth in the Middle East.

Challenges to Anticipate with New Members

Although the Madrid Protocol offers a centralized filing process, each member country retains its own national trademark laws. This means that even if a trademark is accepted at the international level, it may face challenges in some newly acceded countries. National offices may, for example, reject a trademark based on their specific criteria or extend the processing times, especially in cases of opposition.

Furthermore, companies must be prepared to face opposition in the designated countries. These oppositions may be based on pre-existing rights, leading to prolonged disputes or partial refusals of protection in certain countries. Opposition procedures may vary across jurisdictions, and the timelines can differ significantly.

Conclusion

The ongoing expansion of the Madrid System, with new accessions such as Qatar’s, strengthens the system’s global reach, facilitating access to new business markets. However, these advantages come with legal and administrative challenges, particularly linked to the national specificities of member countries. A proactive risk management approach, particularly regarding oppositions and variations in protection criteria, is essential for companies seeking to optimize their international trademark strategy.

Dreyfus Law Firm provides expert support at every international trademark registration and management stage. Our deep understanding of legal subtleties and our experience in global markets ensure optimal protection tailored to your specific needs.

Dreyfus Law Firm works in close collaboration with a global network of specialized intellectual property lawyers.

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The evolution of wine labelling in the European Union: A renewed approach to transparency and consumer information

Written by sacha.tuillier@dreyfus.fr06/03/2024

Labeling of food products, and wines in particular, has always been a major concern for European regulatory authorities. With the aim of increasing transparency and better informing consumers, the European Union (EU) has adopted new rules that will significantly modify wine labeling. Regulation (EU) 2021/2117, applicable from December 8, 2023, will oblige wine producers to provide additional information on their labels, marking an important step in the evolution of food labeling standards.

Legal context

These new obligations fall within the framework of Regulation 1308/2013 of December 17, 2013, also known as the “CMO Regulation” (Common Market Organization), which already defines several requirements for wine product labeling. These requirements include the denomination of the product category, specific mentions concerning the degree of alcohol, the Protected Designation of Origin (PDO) or Protected Geographical Indication (PGI) where applicable, as well as information on the bottler and importer.

Regulation (EU) No. 1169/2011, known as the “INCO Regulation”, which lays down the general principles of food information for consumers, will also apply to these new labeling rules, unless otherwise stipulated. The INCO Regulation has introduced a broad definition of what constitutes an “ingredient”, including any substance used in the manufacture of a foodstuff and present in the finished product.

New Labeling Obligations

The major changes introduced by Regulation (EU) 2021/2117 concern the obligation for wine producers to include a list of ingredients and a nutritional declaration on the label. This list may be limited to an indication of the product’s energy value, but a complete version of the list of ingredients must be available electronically. Allergenic or intolerance-causing substances must, however, be clearly indicated on the product’s physical label.This information can be presented directly on the bottle label, legibly and indelibly, or dematerialized, for example via a QR code. This flexibility of presentation reflects the EU’s desire to adapt to technological developments, while ensuring that consumers are fully informed.

Implications for Producers and Consumers

The new labelling rules are designed to enhance transparency and enable consumers to make informed choices. They underline the importance for wine producers of complying with these requirements to ensure the smooth circulation of their products within the EU internal market.

For producers, this means updating their labeling practices and potentially incurring additional costs to comply with the new rules. However, the transitional period provided for in the regulation, authorizing the disposal of stocks produced or imported before December 8, 2023, offers time to adapt their processes.

Legal implications

 

These changes raise several important legal issues:

 

Compliance and Sanctions: Producers must ensure their compliance with the new rules to avoid sanctions. Effective implementation of these requirements requires a review of labeling practices and technological adaptation for those opting for dematerialized solutions.

 

  • Transparency and Consumer Protection: The main aim of these rules is to increase transparency and better inform consumers about the products they consume. This could have positive repercussions in terms of informed choice and public health.

 

  • Impact on the international market: For non-EU producers, these requirements represent an additional challenge to access the European market. They need to align with these standards to maintain and expand their presence in this market.

 

  • Practical and technical issues: The implementation of the dematerialized option raises practical issues, notably concerning the accessibility and reliability of online nutritional information and ingredient lists.

Conclusion

The adoption of Regulation (EU) 2021/2117 is a giant step towards a more transparent and regulated wine industry responding to growing consumer concerns about their health and the origin of the products they consume. However, their successful implementation will depend on the ability of producers to adapt to these requirements, and the willingness of the authorities to ensure effective and uniform application of the law.

 

Dreyfus et Associés, in partnership with a network of lawyers specialized in Intellectual Property, is positioned as a pillar for wine producers. We offer tailor-made assistance to navigate this new era of labeling, ensuring compliance while preserving the essence of each brand.

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