Counterfeit goods and pirated goods both infringe intellectual property rights, as do moulds or matrices which are specifically designed for the manufacture of goods which infringe an intellectual property right. The presence of these goods on a particular market can seriously damage a person's business, brand and goodwill.

Counterfeit Goods

Counterfeiting poses a serious threat to the business and reputation of trade mark holders. Counterfeit goods are often products of inferior quality to genuine goods and can pose a threat to public health and the image and value of the brand, as well as translating into lost sales.

Counterfeit goods are goods, including packaging, which infringe the rights of a trade mark holder by displaying, without authorisation, a trade mark which is identical to a trade mark validly registered in respect of the same type of goods in question or which cannot be distinguished in its essential elements from the registered trade mark. Irish law also provides that counterfeiters are precluded from evading detection by border control by importing unmarked goods and arranging for them to be labelled and packaged once imported.

Pirated Goods

Pirated goods are defined in Irish law as goods which are, or goods which contain, copies made without the consent of the holder of an intellectual property right. The intellectual property right does not have to be registered in Irish law to be infringed in this way.

Other Infringing Goods

Other goods are capable of infringing intellectual property rights under Irish law. These include goods that infringe a patent, a plant variety right and any mould or matrix specifically designed or adapted for the manufacture of goods infringing an intellectual property right if the use of that mould or matrix infringes the rights of a right-holder.

European law enables the owner of an intellectual property right to require a national customs authority to watch out for any goods being imported from or exported to any country outside of the European Union which potentially infringe the applicant's intellectual property rights. The national customs authority can seize these goods at the point of entry into the country. The Irish Office of the Revenue Commissioners is designated as the competent authority in Ireland to receive and process these applications.

Once goods suspected of infringing an intellectual property right are seized by a customs authority, they will be stored in a warehouse pending determination as to whether or not intellectual property rights have been infringed. If it is established that the goods do infringe an intellectual property right, they will not be exported, re-exported or released for free circulation. Examples of goods where owners have successfully used this mechanism include cigarettes, CDs and DVDs, luxury branded women's clothing, sportswear, Viagra and alcohol, including spirits.

There is no fee for filing an application with a national customs authority. Taking this action is a preventative measure to avert any potential infringement of an intellectual property right. It may also be used as a pre-emptive strike where a right-holder has reason to believe that an intellectual property right has been or will be infringed. Evidence and information gathered through this mechanism can assist you in taking civil actions against those infringing your rights and may assist in grounding offences in Irish law for counterfeit or pirated goods.

In order to have an entitlement to file an application for a customs action, the applicant must qualify as a right-holder. To qualify, the applicant must be the holder of an intellectual property right. Alternatively, the applicant may be a person authorised to use the intellectual property right in question or may be a nominated representative of the right-holder or authorised user. Exclusive licensees, non-exclusive licensees, distributors and commercial agents are sometimes authorised by right-holders to file an application for customs action in the country in which they operate.

An application form must be sent to the Revenue Commissioners by the right holder with proof of their right to apply. The proof that must be supplied depends on the status of the applicant. The customs authority will require proof of ownership of the intellectual property right and if applicable, evidence of the authorisation from the right-holder. We can assist clients to satisfy the legal requirements in terms of documents required to prove the right to apply, the information that must accompany the form and the completion of the application form itself. Each application, when granted, remains valid for twelve months and it may be renewed annually.

We assist many of our clients in protecting their rights by taking actions against those that use their intellectual property rights without authorisation. If assistance is required to make an application for customs action to the Revenue Commissioners then we can help.

As outlined above, a right-holder or authorised user may designate a third party to be their representative to make an application for a customs action on their behalf. We often act as the point of contact for the Irish Revenue Commissioners for our clients.

For further information please contact Deirdre Kilroy or Caroline O'Connell.

June 2009.