Customs detentions play a central role in IP enforcement efforts. Preventing the flow of counterfeit goods between borders, they help to reduce the risk of damage, not least to a rights holder's reputation, IP portfolio, authorised distribution networks and licensing programmes.
For customs authorities to take action, a rights holder must submit an Application for Action (AFA) to a competent customs department. Rights holders are encouraged to educate and work collaboratively with customs departments to educate and increase awareness of counterfeit activity, and to assist in identifying and preventing any suspected infringement.
In the UK and EU, rights holders can apply for AFAs on a proactive basis (where the AFA lasts one year) or a reactive (ex officio) basis following notification of a seizure of suspected counterfeit goods. In the latter case, unless the customs department is instructed otherwise, the AFA will be effective for that particular seizure only. In the EU, rights holders can submit AFAs in respect of one EU territory (National AFA), or on an EU-wide basis in more than one EU territory (Union AFA).
Following the UK's departure from the EU, rights holders are required to file and maintain a separate AFA for the UK, using the UK's online portal. That process remains unchanged and is not the subject of this update.
New mandatory process for submitting AFAs in the EU - IP Enforcement Portal (IPEP)
As of October 2024, IPEP is the mandatory e-portal for 24 member states, and the alternative e-portal for Germany, Italy and Spain (which maintain their existing national portals). Rights holders are not required to re-upload existing electronic AFAs to IPEP, but are strongly recommended to upload any existing paper-based AFAs to IPEP to ensure that customs authorities in the EU have access to information on relevant intellectual property rights needed to process and manage new customs detentions. All AFAs must also now be renewed via IPEP (save for those uploaded on the three existing national portals, which can continue to be renewed on that portal).
Rights holders should be aware that IPEP only permits AFAs (now called eAFAs) to be submitted once all the mandatory fields are completed. In view of this, rights holders may wish to balance the desire to engage in anti-counterfeiting efforts by submitting an eAFA against any sensitivities or risk associated with sharing potentially commercially sensitive information such as authorised lists of distributors or places of production.
In either case, to ensure that customs detentions and destructions are an effective IP enforcement tool, we recommend developing and implementing an appropriate anti-counterfeiting strategy, which includes setting up and managing eAFAs.
We also recommend engaging with IPEP without delay to avoid being notified of an ex officio seizure in the EU without an AFA in place. Since the IPEP enrolment process involves a number of steps and can take some time, failing to sign up early mean rights holders risk missing the four day deadline for an ex officio AFA, beyond which the goods will be released.