The new Law on Customs Measures for Protection of Intellectual Property Rights enters into force in Kosovo on May 23, 2018 introducing important changes intended to align local customs procedures with Regulation (EU) No. 608/2013 concerning customs enforcement of IP rights.
Besides abolishing the annual EUR 100 (USD 118) customs watch application fee, the new law further streamlines the simplified procedure for the destruction of counterfeit goods and introduces the small consignments procedure.
According to the amended simplified procedure, rights holders are no longer required to send a cease and desist letter to notify the owner of the goods about the seizure and to seek consent for destruction. Instead, Kosovo Customs will notify both the rights holder and the owner about the detention within one working day. The rights holder will then have 10 working days to confirm whether the goods are infringing and consent to the destruction of the goods by sending a written notification to the Customs. In the meantime, the owner will also have 10 working days to agree or object to the destruction of goods. As under the previous law, if the owner does not explicitly object to the destruction, the Customs will destroy the goods (tacit consent). The goods will be released if the rights holder does not confirm that the goods are infringing or does not consent to the destruction, or if the owner of the goods has opposed the destruction and the rights holder has not filed a lawsuit within a maximum of 20 working days after the detention of the goods.
The new law introduces a new procedure under which small consignments (up to three units or weighing less than 2kg) can be destroyed without the explicit rights holder’s consent. When filing a customs watch application, rights holders may opt in for this procedure, according to which, after seizing a small consignment, the Customs will inform the owner of the goods within one working day that it intends to destroy the goods. The owner then has 10 working days to either oppose the destruction or consent to it. If the owner agrees or fails to respond, the goods will be destroyed. If the owner opposes the destruction, the process is the same as in the simplified procedure.
The new law also clarifies that rights holders are:
- Required to inform the Customs that an IP right has ceased to have effect within one working day.
- Required to act according to the provisions of the simplified procedure. If they fail to do so, they must be able to provide a reason deemed appropriate by the Customs.
- Only allowed to use information provided to them by the Customs, such as information on the quantity and nature of the detained goods and contact details of the owner of the goods, for the following purposes: (1) to contact the importer to get consent for the destruction; (2) to initiate trademark infringement or damage compensation proceedings; and (3) to initiate a criminal procedure. The use of such information in other ways could be considered misuse.
If rights holders fail to act as specified by the new law, they could face sanctions varying from monetary fines and revocations of customs watch applications to not being allowed to re-apply for customs watch for the IP right in question for a period of one year.
By: Kujtesa Nezaj-Shehu
For more information, please contact Kujtesa Nezaj-Shehu.