Intellectual property rights (trademarks, patents, industrial designs, copyright etc.) allow for their rightsholder to benefit from customs protection. Customs protection is an effective mechanism for preventing the import and export of counterfeit and infringing goods in a particular territory, as well as for countering so-called grey/parallel imports.

In order to activate customs protection, a request must be filed before the appropriate customs authorities. This can cover all of the EU, or individual countries, including Bulgaria and Ukraine. Customs authorities will then monitor for infringing goods at the borders. When such goods are identified, they can be held and destroyed.

This can be extremely useful, as the customs authorities will automatically assist with the enforcement of IP rights and by extension, the preservation of market share by the IP rights holder. The infringing goods are stopped before even entering into circulation on the territory and reaching the end consumers. At the same time, the customs authorities will provide information about the identity of the infringing parties, which allows for the monitoring of such parties and, if necessary, the filing of lawsuits against them.

When notified of goods arrested at the border, it is important to act quickly, as the deadlines to request destruction of the goods are relatively short. In order to successfully navigate the admihnistrative procedures at the customs, we recommend authorising an IP representative to act on your behalf.

When discussing customs protection for IP rights, it is important to take note of the rules on exhaustion of IP rights. Generally, after goods have been lawfully released into curculation on a given territory, the holder of intellectual proeprty rights can no longer oppose further actions with those goods such as further sales, hire-purchase and other forms of commercial use. Your IP representative can assist with analysing the situation and determining whether these restrictions are applicable in your case.

Dr. Emil Benatov & Partners can assist at all stages of customs protection - from the filing of a customs protection request with the customs authorities, to monitoring, arresting and destroying counterfeit goods, to representation in disputes before the customs and courts.