What customs procedures are available to stop the import and/or export of infringing goods?
Intellectual Property (2nd edition)
Identification Procedures: When Customs finds any goods suspected to infringe upon intellectual property rights, it initiates an “identification procedure” in which it makes a decision as to whether or not the suspected goods are infringing intellectual property rights. If Customs decides that the goods are infringing intellectual property rights based on opinions and evidence from the rights holder and the importer, it may confiscate and destroy the infringing goods.
Application for Suspension: The owners of intellectual property rights may request Customs to initiate identification procedures in the case where Customs detects goods suspected of infringing their intellectual property rights in imports or exports. In cases where the suspected goods are those which the intellectual property rights holder applied for suspension and Customs has accepted such application, simplified identification procedures may be available, except in cases of patents, utility model rights and design rights.
For more details about these procedures, please see the Japan Customs’ website: http://www.customs.go.jp/mizugiwa/chiteki/index_e.htm.
Custom recordal mechanisms for the recordal of registered trade marks are available in five of the seven emirates (Abu Dhabi, Ajman, Dubai, Ras al Khaimah and Sharjah). Separate recordals must be filed in each emirate; there is no central recordal system. The customs recordal lasts for the term of registration of the trade mark, so must be renewed on renewal of the registration in question.
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.
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 at the border.
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).