Author: John Shaw and John Battersby

What can brand owners do to prevent counterfeits from coming into the country?

Brand owners know that counterfeit products can harm their reputation and impact their profit margins. 

Consumers should understand that counterfeits are dangerous with fake products not going through any product safety requirements before ending up on shelves.  The Foods Standards Agency issued a warning over a fake branded Wonka chocolate bar and a fake Prime bar.

But what can brand owners do to prevent counterfeits from coming into the country?

If you suspect that goods which infringe your brand’s intellectual property rights are due to arrive in, or leave the UK, you may use a Customs Notice, also known as an Application for Action to ensure those goods are taken out of circulation and limit damage to your brand.

An Application for Action allows you to record your IP rights with the Customs authorities in the UK, and requests Border Force to seize any goods which infringe those rights.

It is worth noting that Applications for Action can be made for infringing goods which have been purchased online and delivered into the UK from overseas, but cannot be made in respect of goods which are purchased abroad and then brought back into the UK in travellers’ personal baggage.

What is an Application for Action? 

An Application for Action is a request for Border Force to detain any goods arriving in or leaving the UK which may infringe your brand’s IP rights, including your patents, trade marks, copyrighted works, or design rights. It lasts for 1 year and must be made 30 working days before you want the monitoring period to begin.

If your application is granted, it will be valid for one year. During this time, if Border Force identify goods which they believe to be counterfeit or infringe your IP rights, they will detain the goods and contact you to confirm whether the goods are genuine or infringing. If you agree that the goods infringe your rights, you must respond within 10 working days and may order them to be destroyed. Please note that if your goods are perishable, such as food items, you must respond within three working days.

Border Force will also inform the owner or importer of the goods that their goods have been detained – they will then have 10 working days to agree or object to the goods being destroyed (3 working days if the goods are perishable).

If you do not wish for the goods to be destroyed, you can pursue the matter in court instead – you can request an extension of up to 10 more working days to begin court proceedings. To do so, you must inform Border Force that you do not want them to destroy the goods, and confirm that you are starting court proceedings.

You will need to provide evidence of this, ie a court-issued claim form, or proof that proceedings cover the goods in question. Both parties will have the opportunity to inspect the goods if they wish to do so.

What are the benefits of an Application for Action?

Its pre-emptive – you don’t have to wait until a counterfeit product is sold, you can rely on existing registered trade mark rights, it is relatively low cost for the level of protection provided, and it is long lasting protection.

How much does an Application for Action cost? 

Making an Application for Action is free. However, you will be liable to pay any costs incurred once Border Force have seized the suspected goods – this includes administration costs and the costs of handling, transporting, storing or destroying the goods. You may also be liable for legal costs and compensation for any loss suffered by the owner of the goods if you or a court confirm that the goods do not infringe your rights, or the action is discontinued due to an error on your part.

Making an Application for Action 

Who can make an application for action?

In order to make an application for action, you must hold the IP rights for the goods you wish to protect or be authorised to enforce them. IP rights management collective bodies can also make an application for action.

How to Make an Application for Action

Brandsmiths can assist you with making the Application for Action.  If you suspect that infringing goods are due to arrive in or leave the UK, you must act quickly – an application must be made 30 working days before you want the monitoring period to begin.

There are two parts to an Application for Action form – the first requires:

- Contact details and proof of ownership of IP rights or proof of authorisation if you are acting on behalf of a rights-holder
- Contact details for one technical and one administrative contact – these can both be the same person. Ideally, the contacts will be familiar with your products and the customs protocols, and able to provide swift responses to any queries from Border Force.The second requires the applicant to provide details about the goods that will be monitored. The more detailed and clear your application, the easier it will be for UK Border Force to identify infringing goods, and the less likely they are to inadvertently seize your own goods.

It is a good idea to include:

- Specific information regarding routes that the infringing goods are likely to take, and information about the routes that your goods tend to take – this can help in differentiating between real and infringing or counterfeit goods.
- Information about the placement of designs, drawings or trade marks on your products – this could be through catalogues or other marketing materials.
- Photographs with comparisons between your products and infringing products.

Ex Officio Action

If Border Force identify goods which infringe your IP rights and you do not have an AFA in place, they will invite the relevant rights-holder to file an AFA within four days. If no AFA is filed within this time, or they cannot identify the relevant rights-holder, then the infringing goods will be released. It is therefore important to secure protection against the distribution of infringing goods by registering your IP rights and submitting an Application for Action as soon as possible.

How else can Brandsmiths support your brand?

Brandsmiths can raise the profile of your brand with UK Border Force and other law enforcement groups. This can be through training sessions delivered by Brandsmiths on your behalf and attendance at conferences with UK Boarder Force.

If you would like more information about our anti counterfeiting services, protecting your brand or applying for an Application for Action please contact info@brandsmiths.co.uk.