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Brand protection and counterfeits: trademarks and customs

To fight counterfeits effectively you need two things: a registered right (usually a trademark) in the countries where you sell or manufacture, and an active application to customs that lets officers detain suspect goods at the EU border. In the EU the framework is Regulation (EU) No 608/2013, and applications are filed electronically through the IP Enforcement Portal run by EUIPO. Here is how to set it up step by step.

By Hiram Trade Editorial Desk

Published

6 min read

Step 1: register the mark where you operate

Trademarks are territorial. A Polish registration does not protect your brand in Germany or the Philippines. There are three main routes:

RouteCoverageWhere to file
National markOne countryNational office, e.g. the Polish Patent Office or IPOPHL in the Philippines
EU trade mark (EUTM)All EU Member States with one filingEUIPO
International registration (Madrid system)Selected Madrid membersThrough a national office or EUIPO to WIPO

The Madrid system, administered by the World Intellectual Property Organization (WIPO), has 117 members covering 133 countries according to WIPO. The European Union joined the Madrid Protocol in 2004, so an international application can designate the EU as a whole. The Philippines has applied the Protocol since 25 July 2012.

Two points to keep in mind:

  • dependency on the basic mark: for five years from the date of international registration, the international registration depends on the basic application or registration; if the basic mark falls, so does the international registration (with an option to transform it into national applications),
  • filing order: in many countries the right goes to whoever files first. File in the manufacturer's country and in key sales markets before you start producing or selling there.

Step 2: protect the brand in manufacturing contracts

If you outsource production abroad, the contract should state:

  • that the mark, designs and moulds belong to you,
  • a ban on producing beyond the order and selling overruns under your brand,
  • an obligation to destroy or de-brand defective batches,
  • a right to audit and to pre-shipment inspection.

This matters because Regulation 608/2013 does not cover goods made with the right holder's consent but sold outside agreed terms (overruns), nor parallel imports. Those cases are handled through civil and contractual remedies.

Step 3: file an application for action (AFA)

An application for action tells customs that you hold the right, what the genuine product looks like and how to recognise a fake.

Key rules:

  • who can file: the right holder, its representative or a person authorised to use the right (such as an exclusive licensee),
  • type: national (one Member State) or Union (filed in one Member State and applicable in the other Member States indicated); a Union application requires a right with EU-wide effect, such as an EUTM,
  • format: since 3 October 2024, applications must be filed electronically through EUIPO's IP Enforcement Portal (IPEP) or the national portals of Germany and Spain,
  • fee: according to EUIPO, filing an AFA is free of charge,
  • validity: customs set a period of action not exceeding one year from the day after the decision is adopted; it can be extended,
  • in Poland applications are handled by the Director of the Tax Administration Chamber in Warsaw.

The quality of the application determines its effect. Include photos of genuine products and packaging, distinguishing features (holograms, serial numbers, stitching, labels), known routes and ports, authorised manufacturers, importers and distributors, and a contact person who can respond to customs quickly. Update the application when packaging or suppliers change.

What happens when customs detain goods

  1. Suspension or detention. Customs suspend release of, or detain, goods suspected of infringement and notify the holder of the decision and the declarant or holder of the goods.
  2. Verification. The holder of the decision may receive samples or images and assesses whether the goods are counterfeit.
  3. Destruction without court proceedings. The goods can be destroyed under customs control without determining whether an infringement occurred, if the holder of the decision confirms the suspicion and agrees to destruction, and the declarant or holder of the goods agrees or does not object in time. The deadline is 10 working days, or 3 working days for perishable goods; silence from the declarant can be treated as consent.
  4. Objection and court action. If the declarant objects, the holder of the decision must start proceedings to determine infringement within that period, otherwise the goods are released. The deadline for starting proceedings can be extended by up to 10 more working days.
  5. Small consignments. Postal or express consignments of three units or fewer, or with a gross weight under 2 kg, can go through a separate destruction procedure if the holder of the decision requested it in the application.

The holder of the decision can be required to reimburse storage and destruction costs. Before filing, set a budget and name the person responsible for fast responses.

If you are an importer, not the brand owner

An importer buying branded goods from an intermediary risks detention of the shipment and a dispute with the brand owner. Before buying:

  • check whether the seller is an authorised distributor (ask the brand owner),
  • compare the price with the market; a price far below it is a warning sign,
  • ask for origin documents and supply chain invoices,
  • verify the company; see verify a foreign supplier and trade fraud warning signs.

Checklist

  • Mark registered in the EU and key manufacturing and sales markets.
  • Manufacturing contract covers ownership of the mark, overruns and defective batches.
  • AFA filed through IPEP with current photos and features of genuine goods.
  • Contact person and budget for handling detentions.
  • A response procedure that works within 10 working days.

Hiram does not verify documents or trademark rights; a company profile shows the result of registry checks (VIES, and for Polish companies also the VAT white list and KRS) and sanctions screening. Whether a counterparty may sell a particular brand is for you to assess. You can look for counterparties on the Hiram market.

This article is informational. For infringement matters, consult a trademark attorney or lawyer.

Sources

This article is for information only and is not legal, tax or customs advice. Rules and rates change: check the current official sources or consult an adviser before you decide.

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