EU Customs IP Enforcement: How US Companies Can Stop Counterfeits at the Border

Counterfeit products can cross several EU borders and reach distributors before a US rights holder learns that they exist. An Application for Action (AFA) allows EU customs authorities to identify and detain suspected infringing goods before release into the European market. For a US company with registered European rights, this can be faster and less expensive than tracing products after they enter ordinary commerce.

What an AFA does. The application places the rights, genuine-product information and practical risk indicators in the customs enforcement system. Officers can then suspend release or detain goods that match those indicators and notify the rights holder or its representative. Customs does not issue a final infringement judgment: the procedure creates a short window in which the rights holder can inspect the facts, seek simplified destruction or start the appropriate legal proceedings.

Which rights can be enforced. EU customs measures are not limited to EU trade marks. They can cover trade marks, registered designs, copyright and related rights, patents, utility models, plant variety rights, geographical indications, trade names where protected under national law, and certain semiconductor topography rights. The right must be enforceable in the territory covered by the application. An EUTM or registered EU design can support Union-wide coverage; national rights generally support action only in the relevant member state. A European patent is not an ‘EU patent’: its territorial effect depends on its validations or, for a Unitary Patent, the participating states.

National or Union application? A national AFA asks customs in one member state to act. A Union AFA can request action in several member states where the relied-on EU-wide rights have effect. The best filing location is not necessarily the company's largest sales market; it should reflect likely ports of entry, fulfilment centres, transport routes and the authorities most likely to encounter the goods. A US company does not need an EU subsidiary to own the rights, but it needs a reliable European contact able to respond within the customs deadlines.

The 10-working-day deadline is the operational core. After detention, the rights holder normally has 10 working days — only 3 working days for perishable goods — to confirm whether the goods appear to infringe and consent to destruction. If the declarant or holder of the goods objects, the rights holder must ordinarily initiate proceedings capable of determining infringement within that period. For non-perishable goods, customs may grant a limited extension. Missing the deadline usually means the goods are released once customs formalities are completed.

Simplified destruction. In many cases no infringement judgment is needed. The goods can be destroyed under customs control when the rights holder confirms infringement and the declarant or holder agrees, or is deemed to agree under the law of the member state after failing to object. The rights holder should nevertheless budget for storage, handling, sampling and destruction. These are not harmonised flat fees and can change substantially with the port, warehouse, product type and shipment size.

Small postal and courier consignments. Counterfeiters increasingly split stock into small packages. The EU framework includes a specific procedure for small consignments of counterfeit or pirated goods where the rights holder has requested it in the AFA. Customs may arrange destruction without involving the rights holder in every individual case unless the declarant objects. This can make an AFA commercially useful even where no single parcel would justify a conventional lawsuit.

What customs needs from the rights holder. Registration certificates alone are not enough. A useful application includes clear photographs of genuine goods and packaging, serial-number or authentication methods, authorised manufacturers and importers, known counterfeit indicators, tariff codes, typical routes, likely origin countries and any available names of shippers or consignees. A nominated contact must be able to answer quickly in European working hours. Customs intelligence improves as detention results are fed back into the file.

What the procedure does not cover. Customs action is principally aimed at goods under customs supervision, especially imports from outside the EU. It is not a substitute for marketplace takedowns, evidence preservation, cease-and-desist work or court proceedings against EU-based manufacturers and sellers. Goods of a non-commercial nature in travellers' personal luggage fall outside the Regulation, and disputes about genuine goods, parallel imports and transit require fact-specific legal analysis rather than an automatic counterfeit finding.

How patents differ from counterfeit trade mark cases. A logo or packaging comparison may be completed quickly. Patent infringement often requires claim construction and technical analysis that customs officers cannot resolve from appearance alone. An AFA can still be valuable for identifiable patented products, but the rights holder should prepare claim charts, product identifiers and a litigation route before a shipment is stopped. If court action becomes necessary, jurisdiction may lie with a national court or, for rights within its competence, the Unified Patent Court.

Costs and risk allocation. There is no EU official fee for filing an AFA. The principal professional cost is preparing a usable application and coordinating the countries requested. After a detention, review, testing, translations, storage and destruction are additional. The rights holder may be responsible for costs incurred by customs or other parties and can face liability if proceedings are discontinued through its act or omission, the goods are found not to infringe, or the procedure is misused. That is why an AFA should be treated as an active enforcement program, not a form filed and forgotten.

A practical US-company workflow. First, confirm that the relevant EU and national registrations are current and owned by the correct entity. Second, map the likely entry points and select a national or Union AFA. Third, assemble product-authentication and shipping intelligence. Fourth, nominate a response contact and agree an internal approval path for destruction or litigation. Finally, review detention data and renew the application before it expires. Clearance before launch is covered in the Freedom to Operate in Europe guide, while EU trade mark registration is explained in the EU trade mark application hub.

If counterfeit or infringing products are entering the EU, send the relevant registrations, genuine-product images, known sellers and suspected shipping routes to docket@bauerip.com. I will confirm the appropriate AFA scope, the documents still needed and a fixed-fee proposal within one business day.