Customs actions
The customs authorities
HM Revenue & Customs (HMRC) is the body responsible for national policy governing IP rights enforcement at the UK external border. Border Force is the body responsible for carrying out the interventions that implement this policy.
Border Force exercises most of its powers in relation to IP crime (including counterfeiting) under the UK Customs Regulation (which is derived from EU law). However, illegal parallel imports must be tackled using the relatively limited powers derived from the Trade Marks Act 1994 (as the UK Customs Regulation specifically excludes parallel imports).
The UK Customs Regulation
The UK Customs Regulation allows Border Force to seize goods suspected of infringing various IP rights including registered trade marks, registered designs, copyright and patents (to the extent that those rights have effect in the UK).
According to HMRC, the Regulation doesn’t, however, allow customs intervention on the basis of passing off rights. Likewise, Border Force won’t take customs action in respect of:
- goods manufactured with the consent of the rights holder or with consent to a certain quantity that has been exceeded (such as parallel imports)
- non-commercial goods contained in travellers’ personal luggage
- goods that have been released for free circulation under the end-use regime in the UK.
IP owners can assist Border Force by pre-emptively lodging an Application for Action (AFA) under the UK Customs Regulation – a request for Border Force to detain relevant suspect goods.
Applications for Action (AFAs)
What is an AFA?
An AFA is a request for Border Force to detain goods suspected of infringing relevant IP rights, including registered trade marks.
Why should an AFA be filed?
Filing an AFA is a relatively simple and cost-effective way for IP owners to maximise the chances of suspect goods being seized at the border and of streamlining the process following seizure. While Border Force can still seize goods (except those that are perishable) if no AFA is in place, an AFA will always have to be submitted following seizure if further action is required.
When should an AFA be filed?
An AFA can be filed at any time and is not contingent upon there being a specific counterfeiting issue or suspect consignment. Filing an AFA up front is recommended. Having an AFA in place will help Border Force to identify suspect goods and reduce the risk of unwarranted seizures of genuine goods. It will also help streamline the process following seizure including ensuring that the right person at the IP owner is contacted by Border Force. Since an eligible IP owner must be identified within one working day of detention (or the goods released), time is of the essence.
Who can file an AFA?
Rights holders and other eligible persons such as licensees. The procedure is relatively simple with an online portal available in the UK.
How long does an AFA last for?
AFAs last for a period of one year but can be extended for continuous one-year periods. If an IP right expires earlier, it is deleted from the AFA.
Is there an official fee?
There is no official fee for filing or extending an AFA.
What must an AFA include?
All AFAs must include details of:
- the relevant UK IP rights to be protected (see above for the rights which qualify)
- proof of ownership of those rights
- the name, address and contact details of the rights holder and its legal and technical representatives
- how to spot infringing goods and technical data on authentic goods.
A list of authorised manufacturers, suppliers and/or importers can also be submitted alongside the AFA which can often reduce the risk of unwarranted seizures of genuine goods.
Are there any risks?
The applicant for the AFA must provide various undertakings in the AFA, including to assume liability to the holder of the goods in certain circumstances and to reimburse, where requested, the costs incurred by Border Force or other persons acting on their behalf from the moment of detention (including storage, handling and destruction costs).
What is an AFA?
An AFA is a request for Border Force to detain goods suspected of infringing relevant IP rights, including registered trade marks.
Why should an AFA be filed?
Filing an AFA is a relatively simple and cost-effective way for IP owners to maximise the chances of suspect goods being seized at the border and of streamlining the process following seizure. While Border Force can still seize goods (except those that are perishable) if no AFA is in place, an AFA will always have to be submitted following seizure if further action is required.
When should an AFA be filed?
An AFA can be filed at any time and is not contingent upon there being a specific counterfeiting issue or suspect consignment. Filing an AFA up front is recommended. Having an AFA in place will help Border Force to identify suspect goods and reduce the risk of unwarranted seizures of genuine goods. It will also help streamline the process following seizure including ensuring that the right person at the IP owner is contacted by Border Force. Since an eligible IP owner must be identified within one working day of detention (or the goods released), time is of the essence.
Who can file an AFA?
Rights holders and other eligible persons such as licensees. The procedure is relatively simple with an online portal available in the UK.
How long does an AFA last for?
AFAs last for a period of one year but can be extended for continuous one-year periods. If an IP right expires earlier, it is deleted from the AFA.
Is there an official fee?
There is no official fee for filing or extending an AFA.
What must an AFA include?
All AFAs must include details of:
- the relevant UK IP rights to be protected (see above for the rights which qualify)
- proof of ownership of those rights
- the name, address and contact details of the rights holder and its legal and technical representatives
- how to spot infringing goods and technical data on authentic goods.
A list of authorised manufacturers, suppliers and/or importers can also be submitted alongside the AFA which can often reduce the risk of unwarranted seizures of genuine goods.
Are there any risks?
The applicant for the AFA must provide various undertakings in the AFA, including to assume liability to the holder of the goods in certain circumstances and to reimburse, where requested, the costs incurred by Border Force or other persons acting on their behalf from the moment of detention (including storage, handling and destruction costs).
The seizure process
The following procedure applies when suspect goods are identified under the UK Customs Regulation.
There is a separate procedure for small consignments (consisting of three or fewer items or which weigh less than 2kg) arriving by post or express courier. This procedure allows Border Force to destroy suspected counterfeit goods (provided they are not perishable) without consulting with the rights holder first. To opt into this procedure, rights holders simply need to elect to do so on the AFA. It streamlines the process for small consignments and cuts down on administrative work.
Border Force and the UKIPO's IP enforcement team
For suspected high-volume counterfeit issues, consider working with the UK Intellectual Property Office (UKIPO) to prompt targeted Border Force operations.
The UKIPO has a dedicated IP enforcement team to combat IP crime. The team is focused on both the civil and criminal aspects of IP enforcement, intelligence gathering and dissemination, financial investigations to support enforcement actions and co-ordination with Trading Standards, the police and Border Force.
This includes actively working with brand owners on large-scale counterfeiting issues. For example, in 2023, the UKIPO engaged in discussions with Dyson concerning counterfeit products entering the market over the Christmas period.
Dyson provided data on suspected counterfeit items, which the UKIPO corroborated using additional intelligence sources. Subsequently, Dyson and the UKIPO made a joint approach to Border Force with this information – resulting in the seizure of 250 counterfeit products.
Parallel imports
The options for tackling illegal parallel imports with the the help of Border Force are much more limited. The UK Customs Regulation specifically excludes parallel imports from its scope. Instead, section 89 of the Trade Marks Act must be relied upon. This only allows Border Force to respond to known consignments
Section 89 of the Trade Marks Act 1994 provides a mechanism for the owners of registered trade marks with effect in the UK (or their licensees) to give notice to HMRC that specific goods, materials or articles that infringe the mark are expected to arrive in the UK at a time and place specified in the notice.
Where such a notice is in place, HMRC will forfeit the goods (subject to an indemnity in favour of HMRC).
Importantly, this provision:
- only applies to items arriving in the UK from outside the EEA or from within the EEA that have not been entered for free circulation and only where the UK Customs Regulation does not apply – practically, this means it largely only covers the illegal parallel import of goods into the UK
- only allows IP owners to file a notice in respect of known consignments – again, this somewhat limits its usefulness
- does not apply where goods are imported for private and domestic purposes.
There is a similar provision for copyright in the Copyright, Designs and Patents Act 1988.
There are also provisions which allow the owners of registered trade mark rights to prevent the transit of certain infringing goods through the UK in specified circumstances. However, the right lapses if the declarant or holder of the goods provides evidence that the trade mark owner is not entitled to prevent the goods from being marketed in the country of final destination.
Tips for working with customs
Ensure relevant IP rights are in place: Make sure you have the right IP rights in place in the UK and elsewhere and can easily obtain copies of registration and renewal certificates.
Record your rights with customs in the UK: File an AFA with customs in the UK. AFAs can also be filed for some or all EU Member States using a parallel procedure. AFAs should be as detailed as possible, preferably including information on how to spot counterfeits and a list of authorised distributors (although a basic filing is better than none). Remember that AFAs don't cover parallel imports, which there is limited scope to tackle using customs processes.
Consider recording rights with customs in other key countries: Consider adopting border protection measures covering:
- countries well-known for manufacturing counterfeit goods
- ‘choke points’, or transit hubs such as Dubai and Hong Kong
- key markets.
Before filing, ask local lawyers whether their customs measures require:
- you to bring a civil action or support a criminal prosecution following the detention of counterfeit goods
- the provision of a bond or surety in case the goods are not counterfeit, and/or
- fees for the translation of documents or for the storage and/or destruction of any goods detained.
Regularly review your recordals: Keep a list of all the customs applications you have in place and any renewal dates. Undertake regular reviews to make sure that the information in them is up to date, particularly regarding who should be contacted if suspect goods are detained, how to spot counterfeits and trends.
Make sure you're on the Anti-Counterfeiting Group's list of IP owner contacts: Border Force (and other enforcement authorities) consults this list when it identifies suspect goods.
Be ready to act when goods are detained: Once goods are detained by customs, the time limits for rights holders to act are all relatively short (especially for perishable goods). It can help to have a procedure in place for what should happen if/when goods are detained, as well as easy access to important documents (such as guides on how to spot counterfeits), information (such as details of key IP rights) and personnel.
Identify and train product experts: For those with more established anti-counterfeiting strategies, you might also wish to have standard documents (like claim forms) ready in case you want to initiate infringement proceedings at short notice.
Notify customs of any suspect goods you believe will be arriving in the jurisdiction: Customs is receptive to receiving information from rights holders on suspect goods believed to be arriving in the UK, as well as on trends or general intelligence. This will also help to build relationships with customs.
Develop relationships with customs and the UKIPO: Customs enforcement is only as good as the information the authorities have available – officials need to be able to identify possible counterfeits during high-level inspections of boxing and packaging. Some big brands have active projects to work with and train customs officers (with brand protection materials and guidance on how to spot fake products specific to their brands).
This investment pays dividends in customs officials then being able to identify potential counterfeits of their own volition without any prior intelligence from the brand owner. The UKIPO can also support potential action with their own intelligence sources and dedicated enforcement team.