An application for customs action (also known as an “Application for Action” or “AFA”) is an important weapon in the IP owner’s arsenal in the fight against counterfeit goods. Here we discuss how the impact of Brexit on AFAs.

IP owners may submit an AFA, putting customs authorities on notice of relevant IP rights (such as patents, copyright, geographical indications, registered trade marks and designs), to facilitate detection and detention of counterfeit and pirated goods.

Once an AFA has been granted, customs authorities will automatically seize suspect goods identified at the border. These become liable for destruction unless the importer objects and sometimes, as may be the case, does not respond. Where the importer objects to destruction, the IP owner is allowed time to determine whether or not the goods are genuine, and to initiate infringement proceedings, if necessary. 

We generally recommend that IP owners routinely file AFAs for commercially-important IP rights. This is particularly advisable in sectors where counterfeiting is common, such as, luxury goods, cosmetics, pharmaceuticals and high-value consumer electronics.  An AFA will usually last a year, but may be extended upon request, provided the IP right in question is still valid. 

An AFA may also be submitted if an IP owner becomes aware that an infringing consignment of goods is expected to enter the country; however, the timing of entry of infringing imports is not often known, and it may take up to 30 days for the customs authorities to process the AFA.  Even where no AFA has been approved, customs authorities may occasionally notify a rights-holder that a suspect consignment of goods has been seized; however, detention of such goods is only permitted for a short window of time (in the UK, 4 working days), to allow submission of an AFA; this can put rights holders under considerable time-pressure to react to a potential infringement. 

In the EU, an AFA for EU-wide action (for example, on the basis of an EU trade mark or design) can be submitted via the customs authorities of any of the EU member states. From 1 January 2021, after the end of the transition to the UK’s exit from the EU, EU-wide AFAs approved by UK customs authorities will cease to have effect in the remaining EU member states and will only be valid in the UK. Similarly, EU-wide AFAs granted by the customs authorities of the remaining EU member states will cease to be valid in the UK. 

Applications for customs action are a quick and cost-effective means of preventing infringing products from entering the market. Where IP owners have interests across the UK and EU, we advise submitting new AFAs in the appropriate territory as swiftly as possible, to ensure continuity of protection after 31 December 2020.

This article is for guidance only and should not be taken as legal advice. If you have questions on AFAs, please do not hesitate to contact our trade marks team.