06.02.2017
If counterfeit products stopped by customs cannot be destroyed by common agreement with the recipient, the trademark owner has the right to declare its demands within private law and have them heard during the same proceedings as the criminal trial.
Stopping fake goods at Finnish customs
When Finnish customs spots a consignment, which contains potential counterfeit products, they will contact Kolster if the trademark owner has a valid decision for customs actions in Finland and has marked us as their representative for customs actions.
Upon receiving notification from customs officials, we will contact the trademark owner without delay and proceed according to their instructions. When products have been stopped at customs, there is a window of 10 working days to inform customs of whether the stopped products infringe the trademark owner’s rights and whether the trademark owner wants them destroyed.
Finnish customs follows a so-called ‘simplified’ destruction procedure, which means that infringing products are automatically destroyed if the trademark owner confirms that the products are in violation of its rights and wants them destroyed, and the recipient of the products is not specifically opposed to this. If the recipient of the products opposes their destruction, the trademark owner has the right to begin a process with the authorities aimed at keeping the infringing products with customs and having them destroyed.
Getting into court process
If the counterfeit products stopped by customs cannot be destroyed by common agreement with the recipient, to defend its rights the trademark owner may report the offence to customs with a view to keeping the products in the possession of customs. In accordance with the request, customs shall begin a criminal investigation and transfer the case to the prosecution for the consideration of charges. If the prosecutor decides on an indictment, the case will be transferred to the district court of the domicile of the recipient of the products, where the recipient shall be charged with an industrial property offence. At this point, the trademark owner has the right to declare its demands within private law and have them heard during the same proceedings as the criminal trial. Typically, such private law demands include the confirmation and banning of the infringement of the trademark rights, destruction of the stopped counterfeit products, as well as a potential compensation claim regarding the unlawful use of the trademark and a compensation claim pertaining to the costs incurred by the infringement.
In a recent case, the District Court of Helsinki imposed a fine on the importer of counterfeit jewellery made in China for an IP rights crime and ordered the importer to pay compensation to the trademark holder for unlawful use of the trademarks and for the damages caused by the infringement.
Monitoring free market
Since in most cases the customs surveillance is not sufficient for removing counterfeit goods in the Finnish market, trademark-owners should also actively monitor the market in order to locate and remove infringing goods from free market.
We have created an investigator led service Kolster Market Watch™ for brand-owners to clean the Finnish market from counterfeit goods. In addition, the service helps our customers to gain valuable information on their own brand and products on the Finnish market. In a short period, the Kolster Market Watch™ service has proven to be an excellent way of tackling infringements of rights quickly, efficiently and cost-effectively.
