What customs procedures are available to stop the import and/or export of infringing goods?
Intellectual Property (3rd edition)
Trade mark counterfeiting activities can be combated at the borders of the country through the seizure and detainment of counterfeit goods, which involves both the Registrar of Trade Marks and Malaysian Customs authorities, which is conducted upon application by the registered proprietor or his agent to the Registrar. Border measures do not apply to unregistered trade marks.
The enforcement bodies such as the police and the Ministry of Domestic Trade, Cooperative and Consumerism have been granted with wide enforcement powers. They have been granted with the power to enter any premises where there is reasonable cause to suspect that there are infringing goods or equipment for making such goods or equipment for making such goods, and to seize such goods or equipment with a warrant. Seizures can be effected without a warrant if there are reasonable grounds to believe that the infringing goods or equipment may be destroyed or removed from the premises due to a delay in obtaining a warrant. The Copyright (Amendment) Act 2012 has extended the right of the police to gain access to computerised or digitalised data when carrying out investigations.
Preliminary injunctions are available for stopping the import and/or export of products that will infringe an intellectual property right, when the goods are in the control of the customs authorities, even if the receiver of the products is unknown. Such a preliminary injunction obliges the customs authorities to retain the goods in question for the duration of the preliminary injunction. The customs authority has a ten working days jurisdiction to retain goods without PI procedures having been initiated.
A copyright or registered trade mark holder may notify Singapore Customs that infringing goods are expected to be imported into Singapore. Singapore Customs will then seize the infringing goods upon import. The intellectual property right holder will then have to institute infringement proceedings within ten working days.
Singapore Customs may also take action on their own accord to detain counterfeit goods.
An administrative procedure which is conducted by the Mexican Patent and Trademark Office, known as “border measures”, which is a kind of preliminary injunction. Its main purpose is to seize or interrupt the free circulation of infringing products at the border.
Customs Protection or Border Protection in China to stop the import and/or export of infringing goods.
Patent, Trademark and/or Copyright record can be put before China Customs for supervising the import and export goods.
Border measures and precautionary actions either before administrative entities or judicial courts.
Only in the case of Trade Mark infringement the trade mark can be registered with Customs and if alerted, or if the authorities notice importation of infringing/counterfeit product, the product will be seized until either the importer can prove the legitimacy thereof or the trade mark owner obtains an order for the destruction thereof.
The Customs and Excise Department has exclusive powers to control goods which prima facie violate IP rights, such as counterfeit products, as well as products which violate any patent rights, SPC goods, trade mark rights, copyright, geographical appellations of origin, design rights, etc. Pursuant to the law on the Control of Movement of Goods which violate IP rights, Law (61(I)/2018, the EU regulation 608/2013 as well as the Commission Executive Regulation 1352/2013, the Customs and Excise Department (‘CED’) has the powers to seize goods at their point of entry in/ exit from Cyprus. The CED may also destroy the goods on suspicion that there infringe IP rights, without being required to establish that there has indeed been an IP right violation. The CED notifies the person responsible for the suspected products prior to any such action, who in turn has a right to object to their destruction.
Any right holder may file a customs Application for Action (AFA) to the CED, for the said department to act at the borders on behalf of the right holder, either on occasion of importation or exportation of goods. Once an AFA is filed, the CED may detain goods found to be suspected of infringing any IP rights thus declared in the AFA. The application may be national or European. All the relevant forms to be submitted to the CED for these purposes may be found at the following link:
The Court obtains both factual and technical information from the evidence submitted by the parties.
a) In most cases, judges do not have technical expertise, although there may be one or more judges who have had a technical education by chance. There are technical assistants who work full-time and research and report technical issues to the judges in the Intellectual Property High Court, Tokyo District Court, and the Osaka District Court. Most of the technical assistants are seconded from the Japan Patent Office and the remaining technical assistants are former patent agents. In some cases where highly technical issues are disputed, the court can appoint technical advisors on a case-by-case basis. The technical advisors are typically leading experts, such as university professors or researchers at public institutions.
The court usually does not conduct expert witness examinations; however, the parties may submit written expert opinions by technical experts as evidence.
b) In general, each party submits the evidence within his/her possession that he/she believes is useful to support his/her arguments. A party can request the court to issue an order against the other party to produce documents, but the court cannot order the production of documents when the other party has just cause for refusal.
By the most recent amendment to the Patent Act in 2019, an on-site inspection system was introduced for patent infringement litigation and utility model infringement litigation. It will come into force by May 2020. Under the new system, the court can appoint a technical expert as an inspector and order the inspector to inspect plants and other sites of the alleged infringer. The inspector can enter the plants or other sites of the alleged infringer and take measures such as operating, measuring, or conducting experiments on the equipment or other objects permitted by the court. The inspector then submits an inspection report to the court. The alleged infringer can file a motion not to disclose all or a part of the inspection report to the IP right owner. The IP right owner can request a copy of the inspection report only after the court has ruled on such motion of the alleged infringer.
In case of suspicion of infringing imported/exported goods, the Customs Administration can temporarily withhold the goods on its own initiative and inform the rights' owner.
The rights' owner can also lodge a request with the Customs Administration to seize allegedly infringing goods. Once granted, such assistance can be upheld and will be applied on a daily basis until renewal becomes due. The applicant must provide all information necessary to decide on the seizure to the Customs Administration in advance. If the Customs Administration has reasonable grounds to suspect that the goods are counterfeits, it will seize them and inform the rights' owner and the infringing goods' owner. The Customs Administration can withhold the goods for a maximum of up to 20 working days, within which the rights' owner will have to obtain a preliminary injunction from the competent judge (or close the matter by settlement with the receiver of the goods where it is agreed who pays the triggered costs and what should happen with the seized goods [usually destruction]). Within the same deadline, the infringing goods' owner must oppose destruction of the goods if such destruction was requested by the rights' owner.
If the Brazilian customs service suspects of counterfeit, it can retain the product and communicate the legal owner of the good to check if the product in question is infringing any right, including IP-related rights.
An IP owner seeking to prevent the importation into the UK, from outside of the EEA, of products infringing its IP rights can file a customs notification with the UK's HM Revenue & Customs. 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.
a. Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
Judges generally do not have technical experience. In patent cases the judge may appoint an assessor. The judge may also be educated by the parties’ respective experts and may also appoint its own expert.
b. What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
Discovery and interrogatories are available. A party not satisfied with the counterparty's response may file a motion to compel, which should in principle be successful for relevant information that is not privileged, provided that the request is not overly burdensome.
Customs procedures for seizing or preventing the importation and/or exportation of infringing goods are governed by the French Intellectual Property Code. In this respect there is two courses of detention procedures.
First of all, the detention may be carried out by the customs administration at the written request of the IPR owner or its exclusive licensees by filling a specific form before the Customs.
Customs shall then withhold in the course of its inspections any goods allegedly infringing proprietary rights.
Once the customs has retained the suspicious infringing products, a notification is immediately sent to the applicant (IPR owner), the holder of the suspicious products and the Prosecutor.
Following this notification and within a delay of three to ten working days (depending the nature of the goods) from the receipt of the notification, the applicant must either:
• request the destruction of the goods in application of the simplified destruction procedure;
• justify to customs one of the following measures have been initiated: filing a complaint with the public prosecutor; initiating an action before the civil or the criminal courts; requesting before the competent court seizure.
The withholding measure is automatically lifted if the IPR owner fails to establish that such measures have been taken. However, at the request duly motivated of the applicant, customs may extend the time limit for ten days.
Second, the detention may also be carried out by the customs administration themselves in the absence of any written request from the owner. In such case, the customs immediately notifies the IPR owner. Following this notification and within 4 working days from its receipt, the IPR owner must file a written request for intervention and follow the same requirements as above mentioned.
Customs procedures may either be based on the EU Product Piracy Regulation and/or national law.
The IP owner may seek the assistance of the Italian customs authority to prevent the importation of counterfeit products.
In this regard, the European Parliament and the Council have introduced Reg. 608/2013/EU repealing the earlier Reg. 1383/2003/CE. The new Regulation, which took effect on 1 January 2014, creates procedural rules for customs authorities to detain counterfeit or pirated goods. In particular, in order to protect its rights, the IP owner can activate the customs surveillance by filing an application in writing before the customs Authority providing accurate and detailed information of the original products. Therefore, if the customs Authority has valid grounds to suspect that infringing goods are going to be introduced in the market or detect infringing goods at the border, it will proceed immediately, suspending the release of those goods for a limited period of ten days. After that period, the customs Authority may proceed to the destruction of the infringing goods if the owner of the suspected products does not file an objection or agrees with the decision of destruction. Further, the customs authorities may act not only when requested by the copyright-holder, but also on their own initiative. Therefore, if they suspect that counterfeit goods are going to be introduced and marketed, they will suspend the release of those goods.
The EU Customs Regulation (EU) No. 608/2013 is directly applicable in Greece and sets out the domestic customs intervention procedure. Owners of Greek trademark registrations may file a National application for action, whereas owners of EU marks may file a Union application for action in any member state, requesting the customs authorities of that member state as well as the customs authorities of any other member states to take action in their respective territories.
It is worth noting that, according to Greek Trademark Law, counterfeit goods that are in transit in Greece are considered to be infringing goods that may be seized by the Customs and destroyed.
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 include:
- 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 favor of the Commissioner of Customs at the opted location
- A copy of Power of Attorney in favor 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).
In order to stop the import and/or export of infringing goods, the holder of an intellectual property right, can willingly register it, as well as in the customs office, in order to apply border measures.
As previously mentioned, Chapter 414 of the laws of Malta, Intellectual Property Rights (Cross-Border Measures) Act as well as Regulation 608/2013 concerning customs enforcement of intellectual property rights deals with customs action in the event of the following:
- The entry into Malta,
- export or re-export,
- release for free circulation,
- temporary importation,
- placing in a free zone or free warehouse, of goods infringing an IPR.
Where goods which are alleged to infringe intellectual property rights are placed under one of the above scenarios, the holder of an IPR may lodge an application in writing with the Comptroller of Customs for action by the Customs authorities. It is also possible that in the course of checks made under a Customs procedure, Customs becomes aware that the goods are goods infringing an IPR. In this situation, Customs may take ex officio action and notify the right holder of the possible infringement. In the event of proceedings filed by the rights holder, Malta Customs may suspend release of the goods or detain them for a period of five working days, to enable the holder of the right to lodge an application for court action. An extension may be granted if so requested by the rightsholder, however no further extensions following this are allowed.
It is interesting to note that the Maltese courts have applied these proceedings even to goods in transit, with goods in transit being stopped and destroyed based on the courts’ interpretation of Maltese law which was stricter than the interpretation of EU law.
Custom procedure can be utilized by a registered trademark owner. Owner of trademark can record trademark with Saudi Customs for watch services. This procedure is very useful and efficient. Saudi Customs is very active in seizures of suspected consignment in coordination with right holders or its authorised representatives.
Kadasa Law Firm has signed Memorandum of Understanding (MoU) with Saudi Customs for cooperation in anti-counterfeiting activities.
The Australian Border Force (ABF) enforces intellectual property rights through the Notice of Objection Scheme. The scheme enables the ABF to seize goods that infringe a valid Notice of Objection that has been lodged by a rights holder in relation to trade marks or copyright owned by them. The ABF can only seize goods suspected of infringing intellectual property rights if there is a valid Notice of Objection in place. To lodge a Notice of Objection, a rights holder/objector must provide details of the trade marks and/or copyright they are seeking to protect as well as deed of undertaking.
In the event that goods are seized by the ABF as a result of the Notice of Objection, the importer/designated owner and the rights holder/objector will be notified in writing. The importer/designated owner must make a claim for release of seized goods within ten working days of notification. If a claim is made, the rights holder/objector will have ten working days to commence legal action. The importer/designated owner may voluntarily forfeit the seized goods at any stage prior to legal action being commenced. The rights holder/objector can also consent to the release of the goods to the importer/designated owner. If the rights holder/objector does not commence legal action within ten days, the ABF must release the goods. Depending on the outcome of the above process, the ABF may dispose of the forfeited goods, usually by destruction or donation to a charity.
The International Trade Commission (ITC) is a government agency that determines if goods that are being imported or exported violate IP protections under U.S. law. If an action is filed with the ITC, the party can ask for an exclusion order which would prohibit the infringing goods from being exported or imported into the U.S. U.S. Customs and Border Protection enforces ITC exclusion orders at the various ports of importation in the United States.