cUSTOMS

The protection of intellectual property rights at Italian and European Community customs offices is certainly the most effective way of combating counterfeiting, both because it is stops counterfeiting at the root by preventing counterfeit goods even entering Italy and/or the European Community and because the aforementioned mechanism works extremely well in this Country.
To this effect, EC Regulation no. 1983/2003 dated July 22, 2003 expressly provides for the intervention of customs authorities vis-à-vis goods suspected of infringing industrial property rights and lists the measures to be adopted against goods infringing such rights.

The intervention of customs authorities
In the event that, after a control has been carried out, there are sufficient grounds for suspecting that goods infringe an industrial property right, the Italian customs may suspend clearance or proceed to block such goods, giving the holder notice of the contested distinctive signs. The latter, within 3 days of notice having been given by customs, may file an application for the customs authorities to intervene.

Such power to suspend or block goods becomes, for the customs authorities, an obligation in the event that the holder of the rights in question has previously submitted an application for action with the customs authorities. In this case, the right holder may, within 10 days (which may be extended for a further term of 10 days) from the customs notice having been given, commence legal proceedings before the competent authorities.

In the absence of a reply from the holder of the protected distinctive sign, customs may release the goods suspected of counterfeiting.

Whoever has submitted to the customs authorities an application for action may, in the event that he is informed of the fact the goods in question have been blocked, obtain details of the shipping of those goods presumably infringing his rights (name of the addressee, sender, quantities etc.), as well as view one or more samples for the purpose of obtaining a technical expertise (which is necessary for establishing whether or not the suspected goods are counterfeit).
In the event that the expertise establishes that the goods in question are counterfeit, customs shall proceed to seize such goods and activate automatically (in the event that the seizure is confirmed) criminal proceedings.

Applications for action
Proprietors of trademarks, patents, designs or industrial models may, for the purpose of protecting their rights at the national and/or European Community borders, file with the central customs authorities, through their agents or lawyers, a national and/or Community customs application for action.
The application fro action – to be filed at the Central Customs Office – must contain information about the rights which the proprietor wishes to protect (such as copies of the registration certificates, images of such rights - i.e. samples - information about the circulation of such goods, their place of origin, destination, technical features etc…).
Such application must be accompanied by a declaration of responsibility signed by the legal representative of the trademark proprietor and the certification of the latter’s signature by a Notary, including any Apostille as may be required as a result of the proprietor’s nationality.
Following the grant of the application for action, such application must be sent to the national customs offices, whereas the European Community application must be sent to all the customs offices throughout the European Union.

The applications lasts for one year and is renewable for further one year terms.