German is one of the most important countries of EU, also is one of European countries have close trade relationship with China. China-German trade value has reached 1839 US$ in 2018, China has been the first trading partner of German for consecutive three years. Recently, there are many cooperative agreements have been concluded between China and Germany enterprises during the visit of H.E. Premier Angela Merkel to China. Given the close interaction of import and export between China and German, furthermore, the Customs plays quite important role in the import and export, we should pay high attention to issues related to Germany Customs’ intellectual property right protection.
System of Intellectual Property Right
German Customs is one of the major implementation authorities related to the protection of intellectual property right, it is in charge of reviewing and detaining import and export goods involved in tort. German Customs at different levels will in charge of detaining issues of different levels and contents according to different responsibility. German Customs system consists of offices at high, medium and low levels. German Customs falls under German Federal Finance Ministry which is the highest leading authority, Hamburg, Kolner, Nuremberg and other 8 senior financial administration committee are medium institutions, customs authorities across the whole country are root authorities. Industrial and Commercial Law Protection Center falls under Nuremberg Senior Financial Administration Committee, will coordinate the customs’ system to check and detain the import and export goods involved in tort inside of German, to mainly prevent the introduction of foreign fake goods into the retail sector, furthermore, to provide legal protection for the industrial and commercial sector.
Germany domestic legislation on the customs’ enforcement on intellectual property right and measures of the customs’ enforcement against the tort goods mainly are distributed in kinds of laws and regulations related to intellectual property right, including, patent law, trademark law, copyright law, appearance design law, law on protection of new specie of plants. Meanwhile, in all cited domestic laws have explicitly stipulated that the community law shall be prevail when domestic law and community law are in conflict.
In Europe Union, the tort of intellectual property right may pose in borders of several member states. If the obligee intents to trace accountability against the infringer in several member states or within all member states, in accordance with a procedure offered by EU Council, the obligee only needs to submit the application to one member state, then he or she can request the performance of customs of several or all member states. Therefore, all member state’s internal protective policy only apply for two status below: (1) when only the domestic needs to take measure while the EU’s law leaves room for discretion, under this situation, the suitable target is the property right falls the national protection (i.e. trademarks of utility model and unregistered trademark), for the usual purpose to fight against parallel import. (2) The control measure only limited to the domestically commercial activities.
As far as the board measures stipulated in EU community law, it can direct at registered trademarks (Germany registered trademarks, EU or Germany trademarks referred by international registration of WIPO), un-registered trademarks, infringed trademarks and symbols, copyright and neighboring right, German and EU registered appearance design, patent and supplementary protection certificates stipulated by regulations on protection of medicine goods plant goods, German and EU plant new specie right, geographical indications are protected by Germany domestic law. According to Germany domestic law, the Customs can also perform activities under status below, including utility model, unregistered symbols and commercial title falls protection of Germany laws, i.e. the establishment’s name and position title, as well as the property right on semiconductors. It is worth mentioning that goods carried by travelers in their luggage do not belong to targets fall under the board measures, unless, the quantity of carrying goods are beyond maximum limitation or there is evidence to show the carried goods will be used for commercial purpose. Also note that, within German, according to the Customs law, the Customs is not only detaining the infringed goods in the field near the border, but also detaining the infringed goods in other Germany land.
Parallel import indicates the native owner of the trademark sells self-manufactured goods to foreign distributors or licenses the trademark to foreign manufactures, those foreign distributors or manufacturers re-import goods to the nation that are the same with the goods that manufactured by the trademark owner in the nation. EU Council rules that the authorization of Customs of member states are not apply to parallel imported goods, EU member states can formulate domestic laws to authorize the Customs to regulate the parallel imported goods. The Supreme Judicial Court of German holds that the parallel import shall fall under the category of the Customs’ enforcement, moreover, this opinion has been supported by The German Federal Government.
Enforcement of Intellectual Property Right
The application procedure of intellectual property right enforcement of German Customs including, providing infringer’s information as much as possible, submission of the application for enforcement to the Customs office falls under Munich legal protection center for industry and commerce (ZGR), obtaining approval from ZGR, continuously updating the suspected infringer’s relevant information. Including, requesting German Customs to protect all required information, including all information involved in suspected infringement and accountability materials for false application. All information related to suspected infringement, especially the accurate and detailed description of the goods and the infringement type. The applicant also can submit relevant goods’ sale channel, transportation ways and the technical difference of infringed goods and the goods to be claimed infringement. Materials of undertaking accountability means a statement of accountability, or an absolute unlimited guarantee (Cases adopt nation border measures). “Obvious infringement of intellectual property right” is the precondition to launch the Customs’ protection. The standard of obviousness depends on whether the reasonable suspicion can be posed based on the applicant’s effective information and other factual status known by the Customs authority. However, in the practice, the identification on the goods by the right owner will be the base for the judgement of infringement. The Customs authority does not and cannot perform legal assessment on the genuine infringement. However, in Düsseldorf, the court holds that the Customs is amenable to perform assessment in the course of judgement of infringement.
Distraint of infringed goods by German Customs including two (2) measures, amongst are distraint by application, distraint by authority. It should be noted that, if the Customs has sufficient ground to suspect the infringement of goods in transit, release of the goods can be pending, or the goods can be detained, however, this measure means temporary release and distraint of goods in the short term, with the purpose of remaining time for the right owner to be claimed infringement to submit the application for protection to the Customs. The Customs will perform the next protection measure when the right owner submits the corresponding application for protection to the Customs within three (3) working days. In German, the Customs authority will not in a leading position in the action, to sum up, the substantial harm to the goods owner/holder that posed by the full action of the Customs actually raised by the obligee’s application, as a result, the obligee/ applicant shall assume the accountability of damages.
As far as the goods’ holder or owner, the relief measure includes provide guarantee letter and cash deposit to the Customs. As far as the protection of the Customs, the potential infringer usually offer protection letter to the Customs clarifying there is no grounds for the infringement at the point view of the potential aggrieved party. However, the force of this kind of protection letter is weaker and usually it will not be adopted, on account of the Customs cannot make legal assessment on the fact of infringement. As far as goods infringed appearance design right, patent right, supplementary protection certificate or plant new specie, the holder, owner of the suspected goods, or the importer can request the Customs for the release after payment of some amount of deposit for the safety. The specific procedure includes the notification of release of goods to be informed two parties, the party submits objection suggestions against the simple destroy procedure and after launching procedure of clarification of infringement fact, the declarant, goods’ owner and holder can submit safety deposit to the Customs and delivery the goods. Contents related to the application will informed the obligee in written. In order to keep the uniformity of regulation, the Customs Office which suspends the release of the goods will consult intellectual property right law with the central customs institution, and then a reasonable and specific amount of guarantee will be given. At least ten (10) working days will be needed from suspension of release to confirmation of guarantee amount, generally, it will be twenty (20) working days and may be longer sometimes. If the goods was detained for several times in the course of long civil litigation procedure, the Customs will re-confirm the amount of guarantee by each case. Once the Customs decides to release the goods, any possible legal remedy approach against this decision, i.e. objection or dispute must be performed without delay, because failure of release of the goods in the procedure will post loss to the allege infringer. Based on the same ground, in the practice, the legality of the Customs’ measures during the opposition procedure also has not been performed review procedure accordingly. However, at this moment, the obligee has right to apply for isolation of released goods to the special court in order to protect its own right and interest.
When the goods is confirmed as infringement, still has possibility to export from Germany. The customs has no right to object the goods’ export from German. As far as the goods in the transit or in the free trade zone or in the free trade storage can be taken measures, however, it does not, of course, include the measure of distraint of the goods. Because the export is usually controlled and regulated under the border measure and civil litigation procedure. Under this background, the export still belongs to one of circles of goods circulation rather than the independent component of the infringement behavior. The Customs also can take measures on the goods in the transit and in the free trade zone or free trade storage. As for whether the Customs can detain the goods under this situation, then, it totally depends on whether the behavior will be regarded as infringement or possible infringement by laws of member states. According the judgement of a Germany case, the goods in the course of transit and those are placed in the free trade zone or placed in the free trade storage will not post the infringement against the intellectual property right. However, if the goods was proved by other specific situation that it would be highly possible to pose the infringement when it put into the market, then, the Customs can adopt distraint measure.
The German Customs may also destroy the goods through simple procedure, but it must be accepted by the party concerned. If the party which is influenced posed an objection, the obligee must re-launch the civil litigation procedure of the infringement. If the infringement was ascertained by the civil litigation procedure, the court also can request to destroy the goods. The replacement of simple procedure of destroy includes transferring out of the sales channels, in German, also includes compulsory enforcement of claim of compensation and charity donation. ( The achievements mentioned above have been offered by Xiangtan University and in collaboration with China Intellectual Property Right Research Institution to organize and perform relevant research and study. Please register in http://freereport.cnipa.gov.cn for more relevant details.)