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.