UK customs enforcement after Brexit

EU Customs Enforcement post-Brexit

The European Commission's Notice to Stakeholders dated 17 August 2020 clarified the post-Brexit treatment of EU AFAs which form part of the framework under Regulation (EU) No 608/2013.

From 1 January 2021:

• Pre-existing EU AFAs filed via an EU27 Customs office will remain valid and enforceable in the EU27 but will cease to have effect in the UK;
• Pre-existing EU AFAs filed via HMRC will remain valid and enforceable in the UK but will cease to have effect in the EU27;
• Any new EU AFA filed via an EU27 Customs office will apply across EU27 only and will not be enforceable in the UK. To obtain protection in the UK, the UK national system must be followed.

UK Customs Enforcement post-Brexit

The Customs (Enforcement of Intellectual Property Rights) (Amendment) (EU Exit) Regulations 2019 now dictate the format of the UK system. The reassuring news for brands and rights owners is that this system largely mirrors the EU process. On 3 December 2020, HMRC clarified a number of the remaining technical details.

• From 1 January 2021, new UK AFAs must be filed online via the HMRC portal. The content of the form is largely the same as the EU AFA form: brands and rights owners will need to provide details of relevant IP rights, evidence of ownership, authority of any representative to act on their behalf and information to help identify counterfeit products. The system mirrors the user interface of UK registered rights applications forms, presenting the user with a number of multiple choice and data input questions and allowing for documents to be uploaded.
• As noted above, EU AFAs that existed prior to 1 January 2021 and filed via HMRC will remain valid and enforceable in the UK: they effectively convert to UK only protection (given the lapse in EU27 protection). The ‘residual’ AFA will remain valid until the expiry of the existing term and can be enforced in the UK until expiry: there is no need to re-file the application in the UK whilst it remains valid. Details of these AFAs will be recorded in the HMRC system but renewals must be processed via the new online system.
• Rights owners will now need to file an EU AFA via an EU27 customs office to obtain protection in the EU27.

Main changes to the UK AFA process

• The new UK AFA form can only be accessed using a Government Gateway ID and password. This portal will also allow UK AFAs filed via the system to be extended;
• Applicants must specify whether the AFA is to cover (1) Great Britain and Northern Ireland, (2) Great Britain only or (3) Northern Ireland only;
• Rights holders will need to hold an Economic Operators Registration and Identification (EORI) number – guidance on obtaining an EORI number can be found on the gov.uk website. Crucially, legal representatives filing UK AFAs on behalf of their clients will also need to hold a separate EORI;
• Only UK IP rights can be relied on: where EUTMs or RCDs have been cloned to create equivalent UK registrations, the new UK registration number must be listed – if UK equivalent protection is to be requested for pending EUTMs or RCDs in the period through to 30 September 2021, rights owners must remember to add these new UK registrations to the UK AFA once granted: this will not happen automatically;
• Representatives previously acting on EU AFAs should obtain a new letter of authorisation confirming that they are authorised to file the UK AFA on behalf of the rights owner, under The Customs (Enforcement of Intellectual Property Rights) (Amendment) (EU Exit) Regulations 2019, as well as Regulation (EU) 608/2013 to which the 2019 Regulations refer;
• Rights owners looking to protect geographical indications in Northern Ireland can file an AFA using the EU AFA form either via HMRC or an EU27 Customs office, by virtue of the Protocol on Ireland/Northern Ireland, but should be aware that the territorial scope of protection will differ depending on the chosen filing route. 

If you have any questions on how this will impact you, please contact your usual Bird & Bird contact or click here to arrange a discussion with one of our team. For the full HMRC guidance, see: https://www.gov.uk/guidance/apply-for-action-to-protect-your-intellectual-property-rights

References:

https://ec.europa.eu/info/sites/info/files/brexit_files/info_site/intellectual_property_enforcement_by_customs_en_0.pdf
https://www.gov.uk/guidance/apply-for-action-to-protect-your-intellectual-property-rights
https://www.gov.uk/guidance/apply-to-extend-your-application-to-protect-your-intellectual-property-rights
https://www.legislation.gov.uk/uksi/2019/514/contents/made