October 2024
INTRO: The transition to the mandatory use of electronic applications for action (“eAFAs”) was finalized, and starting with October 3, 2024, rights holders and their representatives can submit eAFAs before the customs authorities only through electronic means such as the IP Enforcement Portal (IPEP) or the available national portals.
Starting December 13, 2021, Right holders and their representatives can use IP Enforcement Portal (“IPEP”) or national portals in place for submitting their electronic Applications for Customs Action (“eAFAs”) before the Customs authorities throughout the European Union.
IPEP is the EU platform that assists IPR owners in filing and managing AFAs and dealing with related IPR enforcement matters in all 27 member states, with an alternative in three member states which have developed their own trader portals (Germany, Italy and Spain).
Presently, in accordance with the provisions of EU Regulation 608/2013 concerning the customs enforcement of IP rights and, Romanian national Law 344/2005 on certain measures for ensuring the protection of such rights during customs operations, intellectual property rights (“IPRs”), respectively, holders may file before the Romanian Customs authorities a national or an EU-wide application for action (“AFAs”) instructing customs officers to seize any goods identified during customs formalities at the Romanian borders that are suspected of infringing their rights.
The purpose of the AFAs is to instruct Customs to detain any goods suspected of infringing the IPRs registered on behalf of or licensed to the entity that has filed the application for action, by providing the authority with information regarding the rights owned, and in relation to the manufacture and sale of the goods that are placed on the market in Romania/the EU under such rights (i.e. manufacturing place, entities involved in their manufacture, transportation, and market placement, packaging/trade dress information, points of entry in the country, market value, etc.).
When AFAs are granted, Customs seizes any goods that are suspected of infringing the IPRs included in the AFAs, and notify the seizure to the IPRs holders, prompting them to take action by replying to Customs and confirming if the seized goods are found to be infringing their rights. In the event of an affirmative answer, and provided that the goods’ addressee does not oppose to the seizure, the goods will be destroyed, in accordance with the legal provisions in place (i.e. under the supervision of a committee of representatives of the Romanian Customs, the National Fiscal Authority, the Police, the National Consumers Protection Authority and the Environment Protection Authority).
However, Customs authorities may also seize goods ex officio, even if they are not covered by a decision granting an AFA, when there is a suspicion that the goods are infringing an intellectual property right. In practice, this most often occurs when inspectors identify goods affixed with signs that are deemed to be copying well-known or famous trademarks. When such ex-officio seizure cases are reported to the rights holders, they are provided with a four-day term to file a national AFA, as a condition for maintaining the seizure measure and, ultimately, securing the destruction of the infringing goods.
Recently, and in line with the Implementing Regulation (EU) 2024/2399 of 12 September 2024 amending the Implementing Regulation (EU) no. 1352/2013 on establishing the forms provided by Regulation (EU) no. 608/2013 of the European Parliament and of the Council on ensuring the protection of the intellectual property rights by customs authorities, published in the Official Journal of the European Union on September 13, 2024, and which entered into force on the twentieth day following said publication, starting October 3, 2024, all AFAs must be filed exclusively via the IPEP (or national portals available in Germany, Italy and Spain).
In other words, starting from October 3, 2024, all IPRs holders are obliged to file only eAFAs in all EU member states, the portal representing the only available option for both filing, and amending, withdrawing or extending AFAs. The electronic applications completely replace the paper forms that were previously used by the national Customs authorities. However, based on the information provided by the Romanian Customs Authority, eAFAs are presently still required to be printed and filed on paper before its official registry, but reflecting the number obtained via the IPEP portal.
Prior to filing an AFA, IPRs holders which do not have an existing account on the IPEP portal, must first register to get access to the portal, a procedure that requires fulfilling certain validation steps, including by receiving a physical letter to the registered address of the IPRs on the basis of which the account is created. Since the letter is sent to the IPR holder via regular mail, for security reasons, in practice, the overall procedure for registering on the IPEP portal takes considerably longer than the four-day legal term available for filing a national eAFA in response to an ex-officio seizure of goods.
As can be anticipated, the situation above presents major challenges for IPRs holders. In such scenarious, they are unable to exercise their rights during customs operations, leading to the release of confirmed counterfeit goods back into the commercial circuits.
The situations described above are clearly detrimental to the options available for right holders in defending their rights before Customs. We consider that it is to the benefit of all stakeholders that the process of onboarding into the IPEP portal be simplified in a manner that allows IPRs holders to complete their registration on IPEP in a more swiftly manner by completing all validation aspects of registering their accounts online, on the portal, while still observing necessary security measures,
Until such measures are implemented, in order to avoid the above situation and for ensuring a swift access to the AFA mechanism for enforcing and defending their rights at the borders, IPRs holders that are not already registered on the IPEP portal are recommended to take the necessary steps for ensuring that they have access to the platform and can take prompt action when required, for responding to ex-officio seizure notices by filing national eAFAs.
For more information about protecting IP rights during customs operations, with focus on the practice aspects of the actions available in the Romanian jurisdiction, please also check-out our previous article on this subject available HERE.
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