Home > Insights > New EUIPO tool: protecting your products against counterfeits

Authors: Felicity Hide and Luke Portnow
5 April, 2016

The Enforcement Database (EDB) is a new online tool that a number of our clients could find very useful.

What is it?
The EDB allows you to upload information on products that have been granted an intellectual property right, such as a registered trade mark or design, which police and customs officials of all 28 EU Member States can access, making it easier for them to identify counterfeits and take action.

The owners of the intellectual property right(s) must set up an account themselves. Once this is done, clients can then work with your usual adviser here at Boult Wade Tennant to turn it into a potentially very useful enforcement mechanism, updating it as your intellectual property portfolios expand.

If you want customs authorities to take any action at the border on your behalf, you can use the EDB at any time automatically to generate an Application for Action (AFA), containing all the necessary information.

The EDB generally can also, for example, be used so that clients are able to:

  • generate a customs application to protect your products, which if completed with the
    prescribed form, is then automatically translated into the official language of each Member State;
  • become more promptly informed about suspicious cases or shipments detected by
    enforcement authorities (enforcement authorities will be able to quickly and easily search your products and obtain your contact information);
  • flag particular borders or ports of entry to enforcement authorities, where infringing goods have been particularly problematic, or increasing in number;
  • confidentially record which ports your goods go through, so if shipments are found elsewhere, they are automatically detained.

The tool does not replace any of the legal customs procedures but what it does do is create a direct communication channel between right holders and enforcement authorities.

Who uses it?
Customs authorities of the 28 EU Member States currently use the EDB, as do a number of national police authorities. Integration with the EU law enforcement agency, Europol, and the World Customs Organization’s anti-counterfeiting tool, “IPM”, is ongoing.

Companies from all the different sectors of the industry doing business in the European Union are already using the database – from small businesses to multinational corporations.

How can I register?
To apply for an account in the Enforcement Database (EDB), you will need a registered trade mark or registered design within the European Union (e.g. an EUTM or a national trade mark registration in an EU Member State).

Please contact Felicity Hide or your usual adviser should you have an interest in applying for an EDB account; they will be happy to talk you through the process.

More information
A video presentation, an official EUIPO brochure on the EDB, and a step-by-step user guide can all be found at:

https://oami.europa.eu/ohimportal/en/web/observatory/enforcement-database

https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/observatory/resources/enforcement_database/EDB_Brochure_en.pdf

https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/observatory/resources/enforcement_database/step_by_step_user_guide_en.pdf

Authors

Felicity Hide

Felicity Hide
Partner

Phone this number +44 (0)20 7430 7500

Email this address fhide@boult.com

Verulam Gardens
70 Gray's Inn Road
London
WC1X 8BT

Luke Portnow

Luke Portnow
Trade Mark Attorney

Phone this number +44 (0)20 7430 7500

Email this address lportnow@boult.com

Verulam Gardens
70 Gray's Inn Road
London
WC1X 8BT