Border Seizure

Generally, a national border seizure application should be distinguished from a Union application. While national applications are aimed at action by the German customs authorities, a Union application is capable of prompting action by several or even all customs authorities of the EU Member States. This may involve different applications and different procedures depending on the property right and the action sought. This brochure sets out the main features of the border seizure procedure.

The European Union border seizure procedure allows for the confiscation of goods which are suspected of infringing intellectual property rights with effect throughout the Union (!). These rights include Community trademarks, Community designs, international trademarks and designs (WIPO) designating the European Union, plant variety rights and geographic indications of origin. Furthermore, action may be taken against goods attempting to circumvent copy protection. Border seizure covers goods imported into the European Union and/or exported from the European Union or goods registered for re-export. Border seizure at the  European level is subject to Regulation (EU) No. 608/2013. The items that may be seized at European Union customs posts according to Regulation (EU) No. 608/2013 do not include goods whose sale (merely) breaches competition law and goods produced with the right holders’ consent, even if they are to be found in import situations without the right holders’ consent (for more information, see our brochure on Parallel Imports and Non-authorized Sales). The latter, as well as patents, utility models, supplementary protection certificates, semiconductor topographies, national trademarks and designs, and Copyrights may however be seized on the basis of a national application pursuant to German law. 

Border seizure under German law is codified in the legislation regulating the respective intellectual property rights, e.g. in Section 146 Trademark Act, Section 142a Patent Act, Section 25a Utility Model Act, Section 55 Design Act and Section 40a Plant Variety Protection Act, and author’s rights in Section 111b Copyright Act. 

Goods found in travelers’ personal luggage which are not of a commercial nature and which do not exceed a specified value are entirely exempt from seizure. 

Important areas exist where, besides a Union application, a national border seizure application according to German regulations may also be a sensible option, particularly in cases of parallel imports (“overruns”), movement of goods within the Community and non-registered trademarks.

Border seizure is a measure carried out by the customs authorities. The measure is taken regularly in response to applications and also, in exceptional circumstances, on the customs administration’s own authority. Intellectual property right holders, certain collecting societies and professional associations, as well as persons authorized to use an intellectual property right are entitled to make a national application for a border seizure. However, besides the right holder and certain collecting societies and professional associations, only an exclusive licensee in at least two Member States may make a Union application, provided the right holder consents. Only one national application and one Union application may be made for each property right. Applications for border seizure are free of charge and can be requested for up to one year. There is nothing to prevent a reapplication and there is no limit to the number of times an extension to a seizure application may be made, provided the intellectual property right remains valid and the applicant remains entitled.

The application is submitted electronically to the customs authorities outside of Germany thus also receiving the application. The latter may still be amended once it has been submitted. It should be noted that the applicant must immediately inform the customs authorities of any change regarding the continued existence of the property right or of the applicant’s entitlement. 

A border seizure application must contain, inter alia, the following:

• The title of the intellectual property right(s)
• Evidence of entitlement
• In the case of a national application: provision of security

A border seizure application should also contain the following:

• Goods affected
• Information regarding original products
• Information regarding infringing products
• Information for a risk analysis

Border seizure by the customs authorities requires the suspicion of an infringement of an intellectual property right. The breach of the right does not actually have to exist. In purely national border seizure procedures according to German law, customs can only order a seizure if the IP rights infringement is obvious.

The customs authorities only carry out a summary inspection to establish the existence of an infringement of an intellectual property right, i.e. they do not conduct a detailed, substantive inspection, merely a simplified check. In the case of technical property rights in particular, the customs authorities often do not have the necessary resources to check for infringements more closely. As soon as the customs authorities suspect an infringement of an intellectual property right, they detain the goods and inform the customs declarant and/or the owner of the goods as well as the applicant about the seizure.

If the applicant has submitted a proper application, they will receive a comprehensive report on the source of the goods and the persons involved in transporting and declaring them at customs. The applicant is also entitled to inspect the goods. If a proper application has been made, the goods will be handed over or sent to the applicant for inspection. In the course of inspecting the goods the right holder is allowed to go so far as to destroy them and/or to interfere with them substantially if this is necessary to establish that an infringement of an IP right has taken place. The applicant is, however, liable to pay compensatory damages for goods destroyed where applicable, unless the goods were to be destroyed in any case by reason of the rights infringement. 

In the framework of a European application, the applicant then has ten days from notification of the seizure (in the case of perishable goods, just three days) to notify the customs authorities of the infringement of the right and to initiate legal proceedings (main action or preliminary injunction). At the same time, they may apply to have the goods destroyed. In this case, the goods are destroyed by the customs authorities, provided the declarant or owner of the goods either definitely agrees to their destruction or has not objected to their destruction within the period of time cited above (ten or three days). The applicant bears the costs and responsibility for the destruction of the goods. 

Should the declarant and/or owner of the seized goods object to their destruction, the goods will only be destroyed on the basis of a judicial decision.

Given the huge commodity flow nowadays, it is obvious that the chances of customs authorities finding goods infringing IP rights are limited. Thus, it is all the more important to assist the customs authorities as far as possible in finding fraudulent goods. The particular features of the property right, of the original products and of the known counterfeits should therefore be provided in the border seizure application in as much detail as possible, whilst keeping it as simple as possible. Where possible, photographs of the original products or of known counterfeit products should also be attached. If the right holder has concrete facts about individual deliveries (such as the time and means of transport, the transport route, persons involved, etc.), this information should also be passed on to the customs authorities. If a border seizure application is based on a patent, it is also useful to explain the subject matter of the patent intelligibly as well as indicating the identifying features of any patent-infringing goods and providing inspection information.

It should not be overlooked that, due to the vast number of goods imported into Europe, a border seizure application is primarily to be regarded as a measure running parallel to the right holder’s own investigations as well as judicial and/or out-of-court measures to enforce the rights. Under no circumstances is it a substitute for actively monitoring the market and pursuing rights infringements that have been discovered.

As of 01/01/2021, the UK is no longer part of the EU Customs Union and thus has the status of a „third country“. Consequently, corresponding customs formalities apply to goods moving from the UK to the EU, through the UK or from the EU to the UK. This means that traders may have to register with the customs authorities and apply for a so-called EORI number. Communication with the customs authorities in this regard is generally carried out via ATLAS (an electronic IT system). Representation for customs formalities is still possible. 

Companies importing goods from the EU to the UK, or exporting goods from the UK to the EU, or having goods in transit through the UK, are advised to carefully get informed about the new regulations (e.g. on the European Commission website at https://.ec.europa.eu) and, if necessary, to contact a lawyer. The European Commission provides a good initial overview of all the important customs issues related to Brexit, such as a short „Brexit Readiness Checklist“ (https://ec.europa.eu/info/sites/info/files/brexit_files/info_site/na0220590enn_002.pdf) and a more detailed communication „Getting ready for changes - Communication on readiness at the end of the transition period between the European Union and the United Kingdom“ (https://eurlex.europa.eu/legal-content/EN/TXT/HTML/?uri=CELEX:52020DC0324&from=EN). Any changes could include, among other things, the need to file new applications or to amend applications. In addition, VAT rules have changed and import or export licenses may be required. It is also possible that the amount of the guarantee must be adjusted, etc. 

Although the Withdrawal Agreement stipulates that Northern Ireland will remain part of the UK customs territory, there is a special feature in that the EU internal market rules will remain applicable. In terms of customs law, Northern Ireland will therefore be treated as if it were still part of the EU.