As the world contends with the cost of living crisis it is likely people may look to cheaper alternatives, including counterfeit goods. Besides potential injury to consumers or economic loss to brand owners, counterfeiting fuels criminality being linked to money laundering and funding terrorism, human trafficking, child and adult sexual and criminal exploitation. According to the United Nations Commission on Crime Prevention and Criminal Justice, counterfeiting is now the second largest source of criminal income worldwide, second only to drugs. Counterfeit products are a serious issue.
Recording IP rights with customs using Applications for Action (AFAs) is a valuable way of engaging law enforcement authorities to remove counterfeit goods from the market for the benefit of IP right owners and the public. In the post-Brexit world it is necessary to treat the EU and UK separately for the purposes of customs and law enforcement authorities and IP rights holders now need to ensure their anti-counterfeiting strategy covers both territories.
Here we discuss latest practice and requirements for the EU and UK. While, reassuringly, the systems are similar, both territories now require use of online portals to record IP rights with Customs so IP right owners need to take appropriate to ensure their rights are enforced across both territories.
EU online customs recordal portal
In the EU it is possible to file a central IP rights recordal application covering all 27 EU member states.
With their release of the eAFA in December 2021, the EUIPO’s IP Enforcement Portal (IPEP) allows the fully paperless management of a right holder’s customs enforcement in the EU.
Use of the IPEP platform allows IP right owners to add to information provided to customs authorities and communicate with them directly to help identify counterfeit goods at regular intervals which will help authorities make seizures.
IPEP is now the sole way to electronically file and manage your EU AFA in the majority of EU member states, with exceptions in Germany, Spain and Italy where local efiling and management is also possible.
Currently, IPEP allows for the initial application and renewal of all AFAs to be submitted online, with the requirement that a hard copy of the submission form is then manually signed and transmitted via post to the relevant customs authorities. However, IPEP are working to implement digital signatures which will allow a fully paperless submission of an AFA. With the option to e-sign now currently visible on the IPEP portal (although not yet recommended for use), we expect this option to soon be available There will be a grace period in which you can choose to continue with a manual signature, but it is expected that the digital signature will eventually become mandatory.
IPEP are also working to introduce the ability to amend AFAs previously filed outside the portal, which until now has not been possible. Expected in the latter half of this year, this option will allow right holders who have used the paper forms and systems outside the IPEP platform to use it going forward, and we expect the online management of all AFAs (including those previously filed outside of the portal) to become mandatory in the near future. With this shift towards the online management of all EU AFAs, it is worth now reviewing existing AFAs to ensure they are suitable for use online or consider filing a new AFA in an online format.
Use of the portal requires specific signed authorisation by the IP right owner and for the brand owner and representative to have a valid Economic Operators Registration and Identification (EORI) number.
While there are some technical requirements for accessing the portal it is helped that use of the IPEP is paperless.
UK AFA process the year after Brexit
Our article published in March 2021 in the World Trade Mark Review (A Brexit headache? What changes to the customs recordals process in the UK mean for anti-counterfeiting strategies) described the changes in process for use of AFAs to record trade mark and other IP rights with HMRC authorities. As mentioned above, it is no longer possible to use the EU AFA recordal process to cover the UK.
In readiness for Brexit and recognising that requiring too much information from IP right owners could be a hindrance to the AFA process, HMRC streamlined their procedures and processes and produced a new, reduced and less burdensome form which no longer needed to match EU requirements. First impressions of the new recordal process have been positive. They are now much quicker (1-2 days for grant compared to 30 pre-Brexit) and more user friendly. The grant requirements are slightly more relaxed and it soon became clear greater leeway is provided and, for example, if more than one IP right is included in the AFA and expires during the term the entire AFA would not automatically fall away. Moreover, IP right owners could easily update and amend IP right information provided during the term. Pre-Brexit, AFA recordals were also heavily reliant on hard copy paper files which had to be posted to the HMRC whereas now the filing, renewal and management of all UK AFAs can all be handled electronically and fully paperless using the UK’s official Government Gateway. This is a welcome and helpful development. One and a half years later our opinion of the UK AFA process is much the same – AFA grants are quick and are much easier to administer.
The main changes to the UK AFA process are again summarised below:-
- You will need to apply through the UK government gateway and have an access code to submit the AFA online. Your representative can assist here;
- The new AFA form is more flexible than its predecessor. There is less mandatory information required for an AFA to be accepted, for example on genuine articles such as distributor details, as well as any known counterfeiters (although we would strongly recommend including as much information to help HMRC identify fakes as possible);
- The new form also allows for more than one legal or technical contact to be added, in contrast to the previous rules. This makes post-detention responses between the HMRC and trade mark owner or its representative much quicker;
- You will be required to confirm whether the AFA covers Great Britain or Northern Ireland, or both.
- The AFAs generally last for one year but if an IP right expires earlier, only that expired right will be deleted (without proof of renewal), rather than the entire AFA as before.
- HMRC are examining and accepting AFAs in a matter of a few days and much quicker than approvals being granted pre-Brexit. Whether that is down to the flurry of AFAs that were filed around Brexit, only time will tell.
While the utilisation of online AFA recordals in the EU and UK is effectively becoming mandatory there are significant administrative and time benefits to using the systems. It is also the case that the information needed for both processes is similar (though UK requirements are less strict) and while there are specific administrative and technical requirements needed to set up both AFA recordal processes (EORI numbers and authorisation for IP right holders for the EU and online UK government gateway details in the UK) the benefits will hopefully outweigh disadvantages.
The key point is that brand owners need to realise the requirement to use both systems to ensure their rights are enforced by customs across the EU and UK and be aware of the specific details needed. We have guided clients through these changing processes and if you need any help with anti-counterfeiting measures, Marks & Clerk has a dedicated team of experts who can advise you.