Brand protection at the Cyprus border: insights and strategies from the front line

In the article below, which appeared on the WTR portal a few months ago, senior partner and Head of the firm’s Intellectual Property Law department, Eleni Chrysostomides, provides advice on how to effectively work with customs officials at Cyprus border points and ports. The article explores the frontline of brand protection in Cyprus, providing a guide on how to most successfully monitor for – and enforce against – counterfeit and grey market goods. Can rights holders record trademark and brand-related IP information with Customs and, if so, how? Yes, rights holders can record their trademarks and brand-related IP rights (including designs, copyrights, geographical indications, patents, SPCs and trade names) with Cyrpus Customs. A national application for action must be filed with the Cyprus Customs Authority using the prescribed application form and supported by all relevant information and documents regarding the applicant, the IP rights and the relevant goods. The application will then be examined by customs officials and, assuming that all required information and supporting documents are in order, the application will be accepted. If any information is missing from the application, customs officials will invite the applicant to submit the same within 10 working days of notification of the request. Failure to provide such additional information will result in a rejection of the application. The applicant will be notified of Customs’ decision to accept or reject its application, as well as the relevant appeal procedure. Are copyright registrations also registerable with Customs? Yes, a US copyright registration can be registered, and the owner can seek protection under the Berne Convention. Can brand owners send customs officials a product information guide or any additional materials to assist them in identifying genuine products? Yes. In fact, Cyprus Customs encourages brand owners to periodically provide it with product information guides and any available further material that can assist it in the exercise of its duties as a competent authority for preventing the entry and sale of counterfeit goods in Cyprus. It is advisable to provide such copies in electronic (PDF) form. What is the typical process for confiscation or further investigation in the event that customs officials identify potentially counterfeit goods? The procedure followed by Cyprus Customs in case of goods suspected of violating the IP rights of a registered rights holder may be summarised as follows: Initially, Customs will suspend the release of – or detain – the suspected counterfeit goods. Before doing so, Customs may also ask the rights holder to provide it with any relevant information on the goods. Customs will notify the consignee and the rights holder of its decision to suspend the release – or detain – the goods, giving them the opportunity to inspect the goods. At this stage, Customs may provide samples (or photos of samples) of the goods to the rights holder, for the purposes of analysis and to facilitate the relevant process. The suspected counterfeit goods may be destroyed by Customs without the need to determine whether an IP right has been infringed under Cyprus law, only where the following conditions are fulfilled:

1. The rights holder has confirmed in writing to Customs within 10 working days – or three working days in the case of perishable goods – of receipt of notification of the suspension of the release or the detention of the goods that, in its view, its IP rights have been infringed.
2. The rights holder or the consignee has confirmed in writing to Customs within 10 working days – or three working days in the case of perishable goods – of receipt of notification of the suspension of the release or the detention of the goods that it agrees to the destruction of the goods.

Where the consignee fails to confirm to Customs that it consents to – or opposes – the destruction of the goods within the aforesaid deadlines, Customs may deem that the consignee has confirmed its agreement to the destruction. In all other cases, the goods will be released by Customs, unless the rights holder institutes legal proceedings to determine whether an IP right has been infringed within 10 working days of receipt of the customs decision. Except in the case of perishable goods, this deadline may be extended by a maximum of 10 working days upon a duly justified request by the rights holder. How will brand owners typically be contacted when suspicious or counterfeit goods are identified? Brand owners are typically notified by email. What are the potential costs involved in working with customs officials to protect a brand’s intellectual property, and how can these costs be managed effectively? The only official costs payable relate to the costs of storage and destruction of the goods, as these are calculated by Customs on a case-by-case basis. Local attorney fees will be payable according to the fee arrangement agreed between the attorney and the brand owner, in connection with such cases handled by Customs. Legal and official court fees incurred in case of legal proceedings are to be instituted by the brand owner against a counterfeiter who refuses to abandon goods seized at the point of entry. Can you provide examples of successful collaborations between international companies and customs authorities that have resulted in tangible results? There have been numerous instances of successful collaborations between international companies operating in a wide range of industries, including manufacturers of general consumer products, luxury items, and pharmaceuticals, all resulting in the seizure of goods at points of entry (eg, ports and airports). What proactive strategies can brand owners employ to enhance their partnership with customs officials and improve their chances of intercepting counterfeit goods before they enter/exit the market? Brand owners can enhance their partnership with Customs by organising training sessions and providing methods of – and materials for – identifying counterfeit products. Brand owners may also provide Customs with any available information regarding suspicious routes and traders of counterfeit goods, so that customs officials can be extra vigilant with regard to such routes and traders. If you would like further information on the contents of this article, please do contact our Intellectual Property Law team.