What customs procedures are available to stop the import and/or export of infringing goods?
Under the Copyright Act, Geographical Indications Act 2014, and Trade marks Act, the Singapore Customs has powers to search and detain infringing goods. The Singapore Customs may take ex-officio action to detain goods which are (1) imported into or which are to be exported from Singapore, or (2) in transit and these goods are consigned to any person with a commercial or physical presence in Singapore. Where goods are in transit and are not consigned to a local party, the Singapore Customs may examine the goods but has no power to detain these goods even when the customs' examination reveals that they are indeed infringing goods.
The right owners or their licensees (the "objector") may also activate the procedure by giving written notification to the customs authority, providing sufficient information which identifies the infringing goods expected to be imported, time and place of expected importation, etc.
The customs authority may refuse to seize goods unless the objector has deposited with the Director-General a sum of money, or has given security, that is sufficient to reimburse the Government for any liability or expense it is likely to incur as a result of the seizure.
Pursuant to the IPC, customs may, at the written request of the IPR owner, withhold in the course of its inspections any goods allegedly infringing proprietary rights. The IPR owner, the holder of the sized goods and the Prosecutor are immediately informed of the withholding measure.
The withholding measure is automatically lifted if the IPR owner fails, within 3 or 10 days (depending on the nature of the goods) to establish that precautionary measures have been taken, proceedings initiated or a complaint filed.
R: If someone suspects that infringing goods are being exported and/or imported, the best first reaction would be lodging a protective order to stop it. Parties may also submit a complaint near the custom authority or other official inspection entity. The Portuguese customs authority inspects all the movements that occur in custom and if they believe that any goods are suspicious they may order its apprehension until the Court decides if any infringement occurs.
An application for recordal of a valid intellectual property right can be submitted electronically and a single application covers all ports in India. However, in case the client has any information which may assist authorities about any specific ports, it is advisable to provide them such information.
Documents to be submitted online:
- A scanned copy of the registration certificate or proof of title/ ownership of the intellectual property right.
- The serial number and details of the demand draft in favour of the Commissioner of Customs at the opted location.
- A copy of Power of Attorney in favour of counsel / advocate / agent who is filing the Application, if applicable.
- A statement of exclusivity outlining the scope of the IP right sought to be recorded.
- Digital images of genuine goods (for trademarks, product patents and designs).
- Digital images of infringing goods (if applicable/ available).
- A statement on the differentiating features of genuine and infringing goods (not mandatory but advisable for trademarks, patents and designs).
- The IEC code of the right holder and/or other authorized importers (not mandatory but advisable).
- A Statement of Grounds for Suspension of Release of suspect infringing goods.
Hard copies of the complete set of documents uploaded online have to be submitted at the Customs Office of the opted location along with a demand draft of INR 2000/- in favour of the Commissioner of Customs of the opted location an Indemnity Bond and The General Bond or Centralised Bond.
The indemnity bond protects the Customs authorities against all liabilities and expenses they may incur as a result of having detained the goods. In other words, the person importing the goods will not be able to claim damages from the Customs authorities on account of the clearance of the goods having been suspended. Any such liability will be borne by the rights holder.
At the time of registration, the right holder may opt to submit a General Bond in the nature of an undertaking that s/he will submit specific consignment-wise bond backed by a security at the time of interdiction of infringing goods.
The right holder may file a Centralised Bond (which will be a running bond) for a value that is sufficient in their judgment, to correspond to the value of allegedly infringing goods, all over India. The particulars of the Centralised Bond will be uploaded online and applicable to all the ports in India with an online facility of debit and credit. This security amount would then be used against future interdictions of goods that infringe the Applicant’s IP. The right holder would have the ability to “top up” the Centralised Bond at any time without the worry of needing to produce a Consignment- specific Bond in a short time period when infringing goods are interdicted.
The procedures enshrined in Regulation 608/2013 are applied by the Greek customs authorities.
Under the Customs Act, the right holder may file with the Director General of the Customs an application for a verification procedure of infringement goods, after which the Director may stop the import and/or export of them.
An administrative procedure which is conducted by the Mexican Patent and Trademark Office. It is called “border measures”. Its main purpose is to seize or interrupt the free circulation of infringing products.
Customs undertake regular checks, and may stop the import/export of infringing goods of their own accord. In practice, this is likely to happen only in relation to trademarks.
Rights holders may voluntarily record their rights and licensees at Customs. This procedure is a much more effective way of ensuring infringing goods are seized. Nevertheless, it is important to provide Customs with as much intelligence as possible concerning any infringing activity to maximise the chances of seizure.
An IP owner seeking to prevent the importation of products infringing its IP rights can file a customs notification, either in relation to a single member state of the EU, or in respect of European Community trade marks, European Community design right or community plant variety, one or more other member states. An application is valid for a year, after which it must be renewed.
The more information the rights owner is able to provide, the more likely it is that customs will be able to identify and stop infringing products. In addition to details of the IP rights in question, the notification may include information such as barcodes and images of legitimate products. Particularly in respect of patents, it can be difficult for customs authorities to ascertain whether any given product infringes the right(s) in question. The patent owner can improve the chance of infringing products being detected by customs if they provide customs with a simplified description of the patent and the infringing products.
When suspected infringements are identified, customs authorities will detain the goods and contact the rights owner and owner of the goods. The rights owner is then able to inspect the goods to ascertain whether its rights are infringed, and court action may be commenced. There are special provisions for small consignments, which allow customs to simply inform the owner of the goods that they intend to destroy the goods and if the owner consents or fails to respond, customs will destroy the goods after 10 working days.
An IP owner making a customs notification is required to accept liability for any damage that is suffered by the owner of the goods in respect of goods that are seized, but do not, in fact, infringe the IP owner's rights.
Patents and Designs
Plant Breeders’ Rights
The Registrar of PBR’s and an officer of the Department of Agriculture are empowered to carry out inspections and seize any plant, propagating material, substance or other article in respect of which this Act applies. This would extend to areas of export or import within South Africa.
Trade Marks and Copyright
Customs procedures are applicable only in respect of counterfeit goods which are dealt with in terms of the Counterfeit Goods Act 37 of 1997. It is possible to record copyright, registered trade marks or well-known trade marks with Customs, who will thereafter detain suspected counterfeit goods imported into South Africa.
Custom recordal mechanisms for the recordal of registered trade marks are available in five of the seven emirates. Separate recordals must be filed in each emirate; there is no central recordal system.
For other IP rights, Customs will consider stopping suspect shipments on request from the rights holder with supporting intelligence, particularly where accompanied by a court order. The customs recordal lasts for the term of registration of the trade mark, so must be renewed on renewal of the registration in question.
Under Philippine customs rules and regulations, particularly Customs Administrative Order No. 6-2002, an intellectual property rights owner may request for the recordation of its intellectual property right with the Bureau of Customs (“BOC”) to enable the BOC to monitor and prevent the entry of counterfeit goods in the Philippines. This is in consonance with the IP Code provisions, which prohibits the entry into the Philippines of goods in violation of the IP Code, such as those bearing infringing marks or trade names, those containing false designation of origin , false description or false representation.
Particularly, under Customs Administrative Order No. 6-2002, the following are prohibited:
- Those which shall copy or simulate any mark or trade name registered with the IPO, without the authorization or consent of the registrant or its duly authorized agent.
- Those which shall copy or simulate any well-known mark as determined by competent authority, without the authorization or consent of the owner or its duly authorized agent.
- Those which are judicially determined to be unfairly competing with products bearing marks whether registered or not.
- Those which constitute as a piratical copy or likeness of any work, whether published or unpublished, on which a copyright subsists.
- Those which present themselves as a substantial simulation of any machine, article, product, or substance duly patented under the IP Code, without the authorization or consent of the patentee or its duly authorized agent.
- Those which use false or misleading description, symbol, or label that is likely to cause confusion, mistake, or deception as to the affiliation, connection, or association of the imported goods with another person's goods; or those which misrepresent their nature, characteristics, qualities, or geographic origin.
Recordation with the BOC allows the right-holder to apply for the suspension of release of the goods which infringe on his/her intellectual property rights.
Further, a right-holder that has not recorded his right with the BOC may, upon the submission of the same documents above, request the Commissioner of Customs or, for ports of entry outside the National Capital Region, the District Collector of Customs concerned to issue an alert or hold order against any importation suspected to contain infringing goods.
In order to record the IPR with the BOC, the IPR holder must submit an affidavit attesting that: a) the applicant is the rightful owner of the IPR sought to be recorded, or in case of a representative or an agent, that he is duly authorized by the IPR Holder/Owner to make the application; and b) that the person or other entities in the submitted list, if any, are so authorized or not so authorized to make the importation or distribution of such products covered by the IPR together with a sufficient description of the products covered by the IPR sought to be recorded, together with samples thereof.
In addition, the following documents which are meant to aid the BOC in identifying the IPR holder/owner and providing the BOC with minimum information that will help its officers in effectively monitoring and evaluating infringing goods at the border, must be submitted:
a. three (3) certified true copies of the Certificate of Registration issued by the IPO, if the IPR is registered with the IPO;
b. three (3) certified true copies of a decision or resolution of a court or other competent authority declaring or recognizing the claim to an IPR, if the IPR is not registered with the IPO;
c. For copyright and other related rights, an affidavit stating that (1) at the time specified therein, copyright subsists in the work or other subject matter, (2) he or the other person named therein is the owner of the copyright, and (3) the copy of the work or other subject matter annexed thereto is a true copy thereof.
Once recorded, the Bureau shall monitor and inspect on its own initiative suspect imports to determine whether or not they are liable to seizure and forfeiture pursuant to law.
The recordation of IPRs and product or products covered therein shall be valid for two (2) years from date of the recording and renewable every two years thereafter.
A recordation fee of Two Thousand Philippine Pesos (P2,000.00) [approximately Forty Four and 44/100 United States Dollars (US$44.44)] per product but in no case to exceed Twenty Thousand Philippine Pesos (P20,000.00) [approximately Four Hundred Forty Four and 44/100 United States Dollars (US$444.44)] per right-holder must be paid to the Bureau of Customs.
Intellectual property owners can report their registered trademark or registered copyright as well as an exclusion order resulting from a finding of patent infringement issued by the ITC with U.S. Customs and Border Protection (CBP) that enforces intellectual property rights at all U.S. ports of entry. The CBP can exclude from entry, detain, and/or seize merchandise with counterfeit trademarks and gray market trademarked goods as well as pirated copies of copyrighted works.
Customs procedures may either be based on the EU Product Piracy Regulation and/or national law.
On the one hand, the Federal Customs Administration is authorised to notify the right holder in the event that during customs procedures the customs authorities suspect an imminent importation, transit or exportation of goods which would infringe the respective right holder's intellectual property rights in Switzerland. As a proactive measure, the right holder can make an application for assistance at the Federal Customs Administration and thereby apply for clearance of the goods to be refused if customs authorities suspect goods to infringe intellectual property rights in Switzerland. In the event that the customs authority withholds goods based on this type of application, the right holder must then submit an application within 10 days to the competent judge for preliminary measures to be taken.
The control of the import and/or export of goods with unauthorized use of intellectual property is conducted by means of the Customs registry of intellectual property objects (hereafter the Customs Registry). Upon entry of intellectual property object in the Customs Registry, the customs control imports and exports of the goods with the use of such object. Any suspected goods are suspended with notification of the rights owner thereof. The rights owner is entitled to take legal actions in case of unauthorized imports and / or exports such as destruction of the shipments at the border, civil court action and others.
The parties may ask the courts to render provisional injunction decisions for seizure and safekeeping of any products manufactured by means of infringement of industrial property rights or import products which are subject to any infringement, tools for manufacturing those products or tools used for performing the patented procedures in any place within Turkey including customs administrations and free ports or zones. Also, according to Customs Law no. 4458, in case of infringement of any protected rights under the legislations on intellectual and industrial rights, the customs administrations may seize or stop the customs clearing procedures of the commodities subject to the infringement upon the demand of the owner of the right or its attorney. If it becomes clear that any commodity infringes an intellectual and industrial right although there is no such request, the customs administrations may seize or stop the customs clearing procedures of the commodities ex officio for three business days so as to allow the relevant party to make any request.
An owner of an intellectual property right may file an application for action with the Customs Authority. If the Custom Service identifies products suspected of infringing an exclusive right, the custom service notifies the applicant who may then chose to take action against the importer of the infringing products.
Regulation (EU) N. 608/2013 concerning customs enforcement of IP rights applies in Spain covering: Trademarks; Designs; Copyright or any related rights; Geographical indications; Patents; Supplementary protection certificates for medical products; Supplementary protection certificates for plant protection products; Plant variety rights; Topography of semiconductor products; Utility models and Tradenames.
The customs enforcement of IP rights shall not apply, however, to:
- goods that have been released for free circulation under the end-use regime.
- goods of a non-commercial nature contained in travelers’ personal luggage.
- goods that have been manufactured with the consent of the right-holder or to goods manufactured, by a person duly authorized by a right-holder to manufacture a certain quantity of goods, in excess of the quantities agreed between that person and the right-holder.
The Application for Customs Action (AFA) can either be national (only for Spain, based in national or EU IP rights), or European (for all or some of the EU Members, based in EU IP rights).
Certain specific information/documentation need to be filed together with the AFA, not only on the IP rights to be invoked but also on products characteristics, prices, distribution channels etc.
When granting the AFA the competent customs department shall specify the period during which the AFA would be in force (that shall not exceed one year from the day following the date of adoption). The AFA could be extended at the request of the holder.
Once the AFA is in force Spanish Customs authorities may inform of the detention of any suspicious importation and give the opportunity to inspect the goods retained.
If it is not possible to secure the destruction of the products detained at Customs level in application of the corresponding customs procedure, court proceedings (either civil or criminal) should be commenced to to determine whether the alleged IP right has been infringed.
If no court proceedings are commenced in the given term the detained products would be released.
Customs procedures are available for infringement of trademarks, copyrights, and designs, but not patents.
Border measures in Trademarks:
According to the Customs Ordinance, the Customs Authority is entitled to detain imported goods that are suspected of infringing trademarks. It is possible, though not mandatory, for rights holders to file a complaint while recording their registered trademarks with Customs. It is highly recommended that such a complaint be filed if the rights holder is aware of specific shipments of infringing goods bound for Israel or if it wishes to bring certain trademarks to the attention of Customs. The following documents must be submitted with a complaint filed with Customs:
- A guarantee in which the trademark owner undertakes to indemnify Customs and/or the importer for any unjust damages;
- Photographs and/or catalogues of goods depicting the trademark, in order to enable Customs to distinguish genuine goods from infringements;
- Power of attorney; and
- Specific information regarding the importer and country of origin of the infringing goods, if available.
Notwithstanding the above, Customs is authorised to seize suspected goods (whether as a result of a complaint submitted by the rights holder or as a result of a random examination of shipments arriving in Israel). Once such goods are seized, Customs must send appropriate notice to the rights holder and the importer.
In most cases the rights holder must submit a bank guarantee to Customs in order to compensate the importer for any financial damage that may be inflicted as a result of the seizure or the filing of a lawsuit. Upon receiving notification, the rights holder has three working days (an extension of three working days is available) in which to respond. He may either submit the required bank guarantee or request a three-day extension in which to submit it. Only after the bank guarantee has been submitted will Customs advise the rights holder of the importer’s details and allow them to obtain a sample of the seized goods.
Where the goods are indeed counterfeit, the rights holder can either settle the matter amicably with the importer or file a lawsuit against it within 10 working days of the notice date (an extension of 10 working days is available upon filing a reasoned request). Should the rights holder choose to take no further action, the goods will be released.
In some cases, Customs may agree to destroy the goods based on a written opinion submitted by the rights holder, in which he indicates the reasoning behind its belief that the goods are indeed infringing and an undertaking that the rights holder will compensate the importer for any financial damage that may be inflicted as a result of the seizure, as well as to join Customs in any lawsuit initiated by the importer. Such circumstances include the following:
- The goods are in a small shipment which includes several brand-name goods;
- The shipment is suspected of violating the rules of legal imports; or
- The goods arrive in a parcel through the mail.
Border measures in copyrights: are similar to the measures taken in trademarks infringement, yet extremely rare.
Border measures in design: according to the new law, Customs may detain suspected goods, following owner request. This provision does not apply to goods imported for personal use.