The campaign against counterfeit goods promoted by the Italian Customs Agency, in application of EU Regulation No. 1383/2003, has passed a major milestone in the setting up of a multimedia database of authentic products, under the AIDA information system, and of a multimedia database (FALSTAFF), electronically updated by applications for protection submitted by holders of industrial property rights.

Since March 1st 2010, it has been possible in Italy to file an application for protection electronically. The intention of the Italian Customs Agency is that, within a few years, only this procedure will be used for submitting applications. Currently, however, in addition to the electronic filing, it is still necessary to send a paper copy to the Central Fraud Unit in Rome.

The electronic filing procedure simplifies the requirements that the applicants have to fulfil, reduces the approval times for applications by the Customs Authority, and means that the database is kept constantly up to date. And in addition to all this, the applicant can access their files and modify the contents even after submission, to add specifications of new products, insert new catalogues or provide new information about lawsuits and alleged counterfeiting (in line with art. 5, p. 5, EC Regulation No. 1383/2003). The only limitation is that it is not possible to add new rights.

The Italian Customs Agency also require the utmost care in specifying, in the data of the holder of the rights addressed in the application, the details of the Administrative Contact: for each application for protection, the Administrative Contact can choose to be notified via email of the acknowledgement of acceptance of the application, and of reports of a stop order being placed on goods for which counterfeiting is suspected during clearance through customs. In the latter case, the sending of this email marks the beginning of the time legally allowed for the holders to ascertain the forgery and to take any necessary action against the suspected counterfeiters.

Unlike procedures in other countries, it is important to note that for EU-level applications, the Italian Customs Authority allow the holder to indicate only one technical and administration contact name (and this person must be resident in the territory of the EU), irrespective of the number of member states for which protection is sought. This is an extremely important distinction considering that the application, in many cases, is submitted by small and medium businesses which, although being in possession of rights, might not have offices and/or representatives in all the member states or might not be able to afford the costs of appointing individual representatives for this purpose.

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