Background

Following amendments to the customs legislation, which came into force in Latvia on 1 September 2021, it was anticipated that rights holders and their legal representatives would faces challenges to effectively combat product counterfeiting and piracy. At the time, the most signi cant regulatory change was arguably that the courts gained jurisdiction over adjudicating IP rights infringements stemming from customs control measures with respect to possible product counterfeiting and piracy, provided that the declared value of the products in question exceeded €1,000 or their net weight exceeded 1,000 kg, and the declarant/holder of the products objected to their destruction.

Takeaways

Firstly, if the circumstances of a particular case require the rights holder to go to court with a statement of claim to prove that a shipment of goods infringes its IP rights, this does not eliminate the requirement to also submit to the Customs Board a rights holder’s statement con rming that the items of that particular shipment are counterfeit/pirated and giving consent to the destruction of said items.

Secondly, litigating customs matters signi cantly increases the amount of evidence and supporting argumentation that must be submitted to the court in order to substantiate an IP rights owner’s claims. For instance, when all customs matters were examined by the Customs Board, in standard situations it was suf cient for the rights holder to simply indicate the registration numbers of the infringed IP rights, since the customs authorities already had detailed information on le about the rights of a particular entity by virtue of the corresponding customs monitoring application. In contrast, in cases which fall under the court’s jurisdiction, a rights holder must now present this information anew in each case, which becomes especially burdensome when a detained shipment contains items that infringe a large number of registered rights. Moreover, since the court examines customs-related cases as it would any other IP infringement matters, the legal reasoning and arguments in support of the claims must be more extensive than before, which inevitably comes at an additional cost to the rights holder.

Lastly, one of the initial predictions after the amended customs regulation came into force was that infringement matters would take signi cantly longer to be resolved. This has proved to be true. When all counterfeiting and piracy matters fell within the competency of the Customs Board, these were resolved through an administrative procedure, which followed set procedural deadlines and made it fairly easy to anticipate a timeframe for receiving a decision on the destruction of the goods. Depending on the particular circumstances of a case, a decision was taken within two to four months from the date of notice of a possible infringement. Now, in cases involving large shipments, the destruction of infringing items must be attained through civil proceedings, where progress may be impacted by a multitude of reasons. Realistically, at rst instance the court will be able to reach a decision only after one-and-a-half years.

Comment

It is still too early to draw general conclusions about the litigation of infringement matters involving large shipments. First, it is dif cult to comment on how many rights holders have decided against litigation, and why, over the past two years. Further, the number of nalised cases is far from suf cient to analyse how litigation could be streamlined. Several unanswered questions thus remain about the practical impact of the amended customs legislation.