Why can big brands seize domain names?

Border seizure

Property right holders regularly have a great interest in preventing product piracy, plagiarism and parallel imports. This article explains the requirements for border seizure.

Border seizures have a double effect. On the one hand, they offer the possibility of removing pirated goods from circulation and destroying them quickly and inexpensively. Since distribution channels and the identity of the infringer can often be discovered, border seizures also have a preventive effect against future product piracy.

Border seizure by customs

Border seizures are carried out by customs, who can seize goods if they are suspected of infringing the intellectual property rights of third parties. In the case of purely national German border seizures, the violation of the law must be obvious; suspicion is not sufficient here. The seizure can affect both the import and the export of goods. Goods registered for re-importation can also be seized.

The following legal positions can serve as the basis for a customs seizure:

Border seizure in the European Union

brand

patent

Design patents

copyright

Plant variety protection

Geographical designation of origin

Utility model

Parallel imports

Border seizure in Germany

brand

patent

Design patents

copyright

Plant variety protection

Geographical designation of origin

Utility model

Parallel imports

Border Seizure Procedure

Customs are authorized to do so ex officio to confiscate. However, he only gets on regularly Application from the owner of the property right or someone authorized to use the property right active (e.g. a license holder). The claimed property right position must be proven by submitting appropriate documents when submitting the application.

The application must Property rightdescribe. He is free of charge and is initially valid for one year (Section 148 (1) of the Trademark Act), but can be extended. In the case of brands, it is useful to indicate the protected area of ​​goods.

After receiving a Notification of a seizure of goods In the case of EU border seizures, the applicant has the option of informing customs within 10 days (extendable by a further 10 days) that an infringement of property rights has occurred and that legal proceedings have been initiated.

Practical tips on border seizure

In order to make it easier for customs to locate infringing goods, particular care should be taken in the wording of the application in order to enable the investigating officer to make a reliable assessment without great effort, for example by visual / linguistic comparison of the original product and pirated goods that have already been withdrawn from the market.

You should also always apply for samples and samples to be sent in order to be able to check confiscated goods. In this context, the applicant is even entitled to destroy the goods for inspection purposes.

You can also optionally request the destruction of seized goods and / or notification of the origin, origin, quantity and storage location of the goods, as well as the name and address of the consignee, sender, declarant and owner of the goods.

Right of objection of the parties involved

Both the goods recipient and the supplier have the right to object to the seizure. The confiscated goods will then only be destroyed upon presentation of a corresponding court decision.

If the debtor lays down according to Art. 23 Para. 3 Product Piracy Ordinance Contradiction against an order for the destruction of goods on suspicion of an infringement of property rights, the obligee may, as an exception, immediately obtain an injunction without the debtor having to be warned beforehand (OLG Dresden, decision of 02.03.2016, Az. 14 W 106/16).

Overview of legal bases

  • European Council Regulation (EC) No. 1383/2003 of July 22, 2003 on action by the customs authorities against goods suspected of infringing certain intellectual property rights and the measures taken against goods that are known to infringe such rights (piracy -VO).
  • European Commission Regulation (EC) No. 1891/2004 of October 21, 2004 (Piracy DVO).
  • Subsidiary: National legal bases (§§ 146 ff. MarkenG, § 111b UrhG, §§ 55 ff. GeschmMG, § 142a PatG and § 25a GebrMG).