ANTI-COUNTERFEIT MEASURES Customs detention procedures
Notification of suspended goods by the customs authorities
When the goods are identified as counterfeit, the customs authorities stop processing the goods and detain them. Te customs authorities notify the rights holder or its representative, as well as the holder of the detained goods, within one day following their detention, by facsimile or email.
The rights holder has the option to check the suspected fake goods, and demand a sample to determine whether they are actually infringing its IP rights. Any analysis or expert fees to determine the infringement of rights, as well as fees to supervise the customs officers, should be paid by the rights holder and the rights holder must declare its consent where the application is filed.
When the rights holder has been notified of the suspended goods, there are two ways to prevent their entry into Turkey:
• Applying for the simplified destruction procedure; or
• Taking court action for the IP infringement.
Simplified procedures for destruction Te simplified destruction procedure is very effective and cost-saving for fighting against counterfeit actions as it doesn’t require filing any court action, and thus removes the burden of court costs.
To take advantage of the simplified procedures, the rights holder should file:
• A written letter stating that the detained goods infringe IP rights, with the reasons the detained goods should be identified as counterfeit; and
• A letter of consent from the owner of the detained goods declaring that the goods have been abandoned for destruction.
Tese actions must be completed within the specified time limit (10 working days from the receipt of notification or three days for perishable goods).
If the rights holder or the owner of the detained goods does not raise any objections, the customs office can apply the same procedure to destroy the goods, presuming that the parties agree on their being destroyed.
Te letter of consent can be directly submitted to the customs authorities by the declarant or the owner of the detained goods within the
“THE CUSTOMS AUTHORITIES CAN TAKE EX OFFICIO ACTIONS TO PREVENT COUNTERFEIT ACTIVITY WITHOUT NEEDING ANY CUSTOMS APPLICATIONS, IN CASES WHERE THERE IS CLEAR EVIDENCE THAT THE GOODS ARE FAKE.”
same specified time limit, as long as the customs authorities accept the letter of consent from the declarant or the owner covering the destruction of the detained goods.
Court action and preliminary injunction
If the rights holder does not use the simplified procedure, the rights holder can file a request to seize the goods and initiate legal procedures upon the notification of the counterfeit goods. If such a request is lodged, the customs procedures can be suspended for 10 working days aſter filing a request. Te rights holder can ask a criminal or civil court to implement a preliminary injunction, or file court action directly without ordering a preliminary injunction. If a preliminary injunction is ordered, the rights holder should file court action within 10 days from the date of a preliminary injunction.
If the rights holder cannot obtain a preliminary injunction from the court or does not take direct court action within 10 days from the request, and the customs formalities have been already completed for the detained goods, the customs authorities can release the goods against a reasonable security to protect the rights of the IP owner and to enable the rights holder to take legal action.
Te detained goods are stored by the customs authorities for the identified time and all the risks and costs for the storage are the responsibility of the rights holder.
Court decision and afterwards
If the authorised court rules that the detained goods are counterfeit, there are three possibilities for the destiny of the counterfeit goods:
• If the court rules that the counterfeit goods be destroyed, the goods are disposed of by
30 World Intellectual Property Review Annual 2013
is specialises in patent and trademark filing and prosecution, and has extensive experience in all IP-related matters. He has provided counsel in IP enforcement including oppositions, assignments, customs measures and licensing. He is a registered patent and trademark attorney before the Turkish Patent Institute. He speaks Turkish, French and English.
www.worldipreview.com
an authorised customs officer, provided that all the costs for destruction are paid by the owner of the goods.
• If the court rules that the counterfeit goods should be handed over to the rights holder aſter altering their essential character,
the
character of the counterfeit goods should be substantively changed such as not to restore the old form. Dismantling the marks and labels on the counterfeit goods is not sufficient to change the essential characters of the goods.
• If the court rules that the counterfeit goods should be confiscated, the goods are reclaimed aſter change of their essential character is made.
Ex officio actions by the customs authorities
Customs applications specifically filed by
the rights-holders to detain infringing goods are not necessarily required in all cases. Te customs authorities can take ex officio actions to prevent counterfeit activity without needing any customs applications, in cases where there is clear evidence that the goods are fake. For ex officio actions for detaining the goods, the customs authorities can request the rights holder to provide detailed information and documents to recognise the suspected goods.
Oktay Şimşek is a patent and trademark attorney and head of the Foreign Affairs Department at Destek Patent Inc. He can be reached at
oktay.simsek@
destekpatent.com.tr
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