Apply for action to protect your intellectual property rights

Guide

Last updated 18 December 2020

As an intellectual property rights holder, you can help to protect your rights by making an Application for Action. This requests Border Force to detain goods suspected of infringing a range of rights including:

  • trademarks
  • copyrights
  • design
  • patents

To make sure your rights are protected on 1 January 2021 you should make an Application for Action to protect your rights in the:

You can find out more about EU legislation on customs protection of intellectual property rights on the Europa website.

Who can apply

You can make an Application for Action to protect your rights in the UK if you're:

  • an intellectual property rights holder
  • an intellectual property rights management collective body
  • formally authorised to both use and start court proceedings to protect the rights

If you already have an Application for Action

If you already have a UK application through the Europa website, you'll need to extend your application when it expires.

If your rights are already protected by an application made through another EU member state, they will not be protected in the UK after 31 December 2020. You need to make a new application to protect your rights in the UK from 1 January 2021.

The following rights no longer exist in the UK after 31 December 2020:

  • international registered trade mark - designating the EU
  • EU trade mark
  • international registered design - designating the EU
  • community registered design
  • unregistered community design

Comparable rights have been introduced in the UK from 1 January 2021. If your application includes these comparable rights, it can only be processed from this date onwards.

If Border Force have found goods before 1 January 2021 that they think infringe your rights, they may still be protected as the ‘ex-officio’ process can be used.

If you are contacted by Border Force in relation to an ‘ex-officio’ detention and you’ve already made an application to protect your rights, tell them the date and time you made the application.

If you want to protect geographical indications in Northern Ireland

You must complete the application for action form on the EU's Europa website if you're a producer, and you want to protect one of the following in Northern Ireland:

  • food and agricultural products
  • wine
  • spirit drinks
  • aromatised wines
  • other geographical indications that have an exclusive intellectual property right by national or Union law, or that are covered in agreements between the EU and other countries

You can find more details and check which geographical indications are covered on the Europa website. You must send applications to protect geographical indications in Northern Ireland to the Intellectual Property (IP) Rights Application for Action (AFA) Approvals team by emailing: approvals.ip@hmrc.gov.uk.

Before you apply

You'll need to sign in using your Government Gateway user ID and password. If you do not have sign in details you can create a user ID and password.

You'll need details of the intellectual property rights you want to protect, this includes the:

  • type of right
  • specific or technical data, for example registration number, patent number or Nice class
  • duration of the protection and any additional classification

You'll also need to upload:

  • evidence proving you hold the relevant rights for the intellectual property
  • evidence (if you're not the rights holder) proving you're authorised to act on behalf of the rights owner
  • information to help identify genuine or counterfeit goods such as markings, barcodes and images
  • information to help assess risk, for example, authorised distributors and routes

To support your application, you can upload a maximum of 50 files in the following file types:

  • PDF
  • JPEG
  • XLSX
  • ODS
  • DOCX
  • ODT
  • PPTX
  • ODP

Your files must be:

  • individually less than 10MB
  • collectively less than 35MB

If you exceed any of these limits your application will not be processed and you’ll have to apply again.

If you need to add more files, send the files to the AFA Approvals team at approvals.ip@hmrc.gov.uk. Tell them your submission reference, which was provided to you on the confirmation page of your application.

When to apply

Send your application 30 working days before you:

  • want the monitoring period to start
  • expect infringing goods to be imported or exported

How to apply

Use the online form to apply for action to protect your intellectual property rights.

Costs

It's free to make an Application for Action, but you're liable for any costs incurred from the moment Border Force detains the suspected goods. This includes administration and goods being:

  • handled
  • transported
  • stored
  • destroyed

You'll also be liable for legal costs and compensation for any loss suffered by the owner of the goods if:

  • you or a court confirm the goods do not infringe your rights
  • the action is discontinued because of an error on your part

After you've applied

HMRC will review your application and contact you if they need more information. Normally, they'll write to you within 30 working days from receipt of your application to let you know it's been granted. It will be valid for one year from the decision to grant your application.

How Border Force uses your Application for Action

If Border Force detect suspect goods at the border they'll contact you to check whether you think the goods are genuine.

You'll have to confirm whether you think the goods infringe your rights and if you agree to their destruction.

If the goods are perishable, such as food that will deteriorate, you'll need to reply within 3 working days.

If the goods are non-perishable, you'll have 10 working days to reply and you can request an extension of up to 10 more working days to start court proceedings.

Border Force will also:

  • tell the importer or owner of the goods that their goods have been detained and give them either 3 or 10 working days to agree or object to the goods being destroyed
  • give both the rights holder and the importer the opportunity to inspect the goods

If there's an infringement of rights without an Application for Action

Border Force sometimes finds goods that may infringe intellectual property rights when there's no Application for Action.

If they think you're the rights holder for the goods, they'll ask what action you want to take. If you confirm the goods infringe your intellectual property rights, Border Force will detain them and tell the importer within one working day. If Border Force cannot identify the rights holder, the goods will be released.

If you want the goods destroyed, you must submit an application within 4 working days. This is known as an 'ex officio Application for Action'. You cannot make an 'ex officio Application for Action' for perishable goods. If you do not submit an application, the goods will be released.

An 'ex officio Application for Action' will cover that particular consignment of goods, unless you request that the rights are protected for one year when you make the application.

Destruction of goods

If you confirm goods infringe the intellectual property rights covered by your Application for Action, they'll be destroyed when:

  • both you and the importer or owner of the goods agree they can be
  • you agree, but the importer or owner does not respond within the notification period

Border Force will let you know if the importer or owner objects to the goods being destroyed. If this happens, you have until the end of the notice period to show you've started proceedings to prove the goods infringe your rights. If you fail to do this, the goods will be released.

Goods that arrive by post or express courier

There's a different procedure for goods arriving by post or express courier that infringe your rights. This is called the small consignments procedure and it allows the goods to be destroyed without consulting you first. This can happen when you instruct Border Force to use the small consignments procedure on your Application for Action and the:

  • consignment contains 3 or fewer items, or weighs less than 2 kilograms
  • goods are suspected of being counterfeit or pirated
  • goods are not perishable

Taking legal action

Instead of destroying the goods, you can choose to take the matter to court. You must write to Border Force telling them you do not agree to the goods being destroyed and confirming you're starting court proceedings. You must provide evidence of this before the notice period expires. For example:

  • a court issued claim form (England and Wales) or a writ (Northern Ireland) or signed summons (Scotland)
  • proof the proceedings cover the goods in question

When you should amend or revoke your application

You must contact the AFA Approvals team by emailing approvals.ip@hmrc.gov.uk if:

  • you're no longer entitled to submit an application
  • your intellectual property right no longer has effect (for example if it expires or is sold)

Your Application for Action can then be amended or revoked.

Taking action against grey market goods

Goods that infringe your intellectual property rights are sometimes called 'grey market goods'.

The owner or licensee of a trademark or certain copyright owners can give notice in writing that infringing goods or copies are expected to arrive in the UK, at a specified time and place. They can also request that they're treated as prohibited. To give notice, you'll need to pay a fee.

This only applies to infringing goods arriving from outside the European Economic Area, or goods from within the area that have not been entered for free circulation. Goods that are prohibited are likely to be protected and may be seized under UK customs law.

For more information on how to give notice, contact the AFA Approvals team by email: approvals.ip@hmrc.gov.uk.

More information

If you need more information from the AFA Approvals team:

Email: approvals.ip@hmrc.gov.uk.

Write to:

HM Revenue and Customs
IP Rights AFA Approvals Team
Group 3
Floor 6
Graeme House, Derby Square
Liverpool
L2 7XS

You can also contact the imports and exports helpline for help with importing and exporting goods.


First published 8 December 2020