Customs action against counterfeit goods: how a customs procedure works in practice

Counterfeit products can cause serious harm to your business. It is therefore important to take action before they reach the market. At that stage, the products are often still in containers, in storage or with customs at the border. Examples include products bearing your trade mark, packaging identical to that of your products, or the unauthorised use of your logos. 

That is precisely why customs action can be an effective measure. A customs procedure can enable counterfeit goods to be detained at the border before they are distributed any further. Customs action is therefore an important part of effective anti-counterfeiting. 

At the request of a rights holder, customs may take action against goods suspected of infringing intellectual property rights. Such a request is also known as a customs Application for Action (AFA). 

An Application for Action allows you to ask customs to detain counterfeit goods before they reach the EU market.

Why take customs action against counterfeit goods?

When you think of counterfeiting, you may first think of webshops, online marketplaces or physical shops offering products for sale. But the problem often starts earlier: when goods are imported. This is precisely where customs can play an important role. 

A customs procedure brings the point of enforcement forward. You do not have to wait until the counterfeit goods are sold; potentially infringing consignments may already be detained when they enter the EU. This makes customs action particularly effective in international trade, in cases of repeated infringement and for products known to be frequently counterfeited. 

The main advantage is that, instead of merely responding to individual advertisements or points of sale, you can stop the inflow of counterfeit goods at an earlier stage. Customs action therefore becomes a practical part of your broader enforcement strategy.

National AFA or Union AFA?

You can submit an Application for Action for a single Member State or opt for a Union AFA covering the European Union. Which option is most appropriate depends on your market and distribution structure and on the countries through which you expect infringing goods to enter the European Union.
 

If customs identifies goods that may infringe your IP rights and are covered by an AFA, those goods will be temporarily detained. You (or your lawyer) will be informed and given the opportunity to assess whether they are in fact counterfeit or otherwise infringing, and whether you wish to take further legal action. 

In practice, you need to act quickly following a customs notification. You will need to assess whether your IP rights are being infringed. 

If you establish that the goods are counterfeit or otherwise infringing, they may, subject to certain conditions, be destroyed. In principle, this requires the consignee or importer to agree to destruction, whether expressly or by tacit consent.

When can the goods be destroyed?

Destruction is not automatic. It must first be confirmed that the goods do in fact infringe your IP rights. Customs will inform the party or parties involved in the consignment and give them an opportunity to object. 

It is therefore important to respond both quickly and carefully after receiving a customs notification. If you do not confirm in time that the goods are infringing, or do not provide clear instructions regarding destruction, customs may release the goods and valuable enforcement opportunities may be lost.

What are common mistakes in customs procedures?

A customs procedure can be effective, but only if it is properly prepared. In practice, problems often arise because the information provided is too general or because the response is not fast enough. Common mistakes include:

• no clear description of genuine products
• insufficient information about the features of counterfeit goods
• an expired or incomplete overview of IP rights
• no internal point of contact for customs notifications
• responding too late to a notification 

A good AFA is therefore more than just a form. It is part of your broader enforcement strategy.

Customs action or court proceedings?

Customs action is primarily intended to detain goods and prevent their further distribution. In some cases, that is sufficient, for example where the products are destroyed. 

In other situations, additional legal proceedings may be necessary. For example, if you wish to:

• claim damages;
• obtain information about the origin of the goods or their customers;
• stop systematic infringement from a particular source;
• obtain an injunction. 

Customs action and court proceedings are therefore not mutually exclusive. In fact, they often reinforce one another. A customs procedure will therefore often form part of a broader anti-counterfeiting strategy.

Customs action often requires quick decisions. Are the goods actually counterfeit? Do you agree to their destruction? And should you also take action against the importer or seller in addition to pursuing the customs procedure? Precisely because the time limits are short, it is important to know in advance which steps need to be taken. A lawyer can assist with:

• preparing and submitting an Application for Action
• assessing customs notifications
• liaising with customs, importers and other parties involved
• arranging for detained goods to be destroyed
• obtaining an attachment order or commencing proceedings
• developing a broader anti-counterfeiting strategy 

This helps prevent you from having to make decisions under time pressure. You can act more quickly and carefully, using an approach that reflects your IP rights and commercial interests. 

Do you suspect that counterfeit products are affecting your trade mark or product? It is advisable to assess in good time whether an Application for Action fits within your enforcement strategy. This can help you act more quickly, prevent further distribution and protect your IP rights more effectively.