Customs Measures Against Sale Of Infringing Goods

There are various ways to protect one’s Intellectual Property in a particular jurisdiction and also for the enforcement of rights associated with it. One can get the IP registered and move to the court in case it is infringed by someone to get appropriate remedies. But what happens in the case of import-export of goods? In a common case of infringement, one can identify the infringer and enforce their rights against such infringer. But suppose there is an import of infringing goods and such goods are then supplied to various retail outlets spread across the country. Enforcing the rights of the IP owner against each such outlet will become a tiresome, expensive, and unnecessary burden. Therefore, measures have to be taken to stop the infringing goods at the customs itself. Consequently, it becomes imperative for the IP owners to get a recordal from the Customs Office so that the enforcement process becomes easier in the future.

Course of Action to be taken:

Let us understand the process with the help of an example. Suppose a particular well-known manufacturer of say perfumes, is aggrieved by the rampant import of infringing goods in India supplied from some foreign country. The manufacturer has his trademark registered, has copyright in the artistic design included in the logo of the trademark. It can also be the case that the design of the perfume bottle is registered under the Designs Act, 2000. But let us assume that there is copyright and trademark involved in the instant case. How should the owner proceed to enforce his IP rights? Following are the steps to be taken in order to ensure maximum protection of the IP in such cases:

  1. If the IP is not recorded with the customs, the IP owner should immediately apply for a recordal to get their IP recorded with the customs office so that the enforcement becomes easier in the future. One would have to apply for all of the products/services for which their IP is registered.
  2. Further, a notice has to be sent to the Commissioner of Customs as per Section 140 of the Trademarks Act, 1999, Section 53 Of The Copyrights Act, 1957 read with Section 2(33), Section 11(1), Section 11(2)(n), Section 11(2)(u) of the Customs Act in conjunction with the relevant rules under Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 in case there is an urgent requirement and there is an intel of a suspected import. If not, the manufacturer can apply for a recordal as per rule 3 and other relevant rules under Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 so that in the future if there is an import of infringing goods, it will be suspended by the customs at the port itself.
  3. All these laws prescribe that if there is an import of prohibited goods, one can enforce their intellectual property rights which are being infringed under all the specific acts depending upon the IP involved, under the Customs Act, 1956 read with Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007.
  4. After that, the Commissioner of Customs, upon satisfaction that the imported goods are prohibited within the meaning of S. 11(2)(n) of the Customs Act, will suspend clearance of the goods and then a representation has to be made as to the fact that the IP has been infringed from such an act of import. If the Commissioner is satisfied with the representation, he may require the importer of the goods, or his agent, to produce any documents in his possession relating to the goods and to furnish information as to the name and address of the person by whom the goods were consigned to India and the name and address of the person to whom the goods were sent in India. Such information may be furnished to the IP owner by the Commissioner. The IP owner will also be required to examine the impugned infringing goods with the assistance of an expert, take pictures or samples, etc. After that, a show-cause notice is served upon both the parties which is followed by a hearing that has to be conducted within 10 days which can further be extended by 10 days on request.
  5. The customs would have to bear costs regarding suspension, demurrage, and destruction charges of the prohibited goods. The IP owner would be required to submit a bank guarantee having a value of 110% of the value of the prohibited goods coupled with a fixed deposit of 25% of 110% of the bank guarantee for such purposes. This amount would be notified by the customs office to the IP owner whenever a consignment’s clearance is suspended. The application notice fee is 2000 Rs.
  6. Once the IP holder gets a Unique Permanent Registration Number after a successful recordal with the customs, the customs office will then take action suo motto whenever a product is imported through customs border and will inform the IP owner about the same.

List of Important documents and information required for the recordal procedure:

  • Country in which the genuine goods are manufactured/produced/traded/exported.
  • County of origin of genuine goods.
  • Country of origin from which the infringing goods are suspected to be imported.
  • Country of destination from which the infringing goods are suspected to be exported to.
  • Name of the authorized representative who imports or exports the genuine goods.
  • Valid registration certificates of the IP issued by the relevant government authority.
  • Power of Attorney authorizing the advocate to represent the IP owner
  • Notarized General Bond
  • Notarized Indemnity Bond (indemnifying the Customs authorities against all liabilities and expenses on account of suspension of the release of allegedly infringing goods)
  • Statement of exclusivity (As to the exclusive ownership and use of the IP in relation to the goods)
  • ID proof
  • Images of the genuine goods
  • Grounds of suspension of the release of suspected goods
  • Undertaking for the bank guarantee and if the IP is valid for less than a year
  • Demand Draft of 2000 Rs.

It is a must for all Intellectual Property Owners to be aware of the remedies available to them at law for better enforcement of their rights. Each remedy is the most effective when applied appropriately as per the demands of the situation. This remedy as discussed above stops the consignment at the borders itself saving the hassle of suing smaller units at different locations. Therefore, it is imperative for the IP holders to get their IP recorded with the customs office to ensure that their rights are enforced efficiently.

Author: Niharika Tiwari – a student of SVKM’s Pravin Gandhi College of Law (Mumbai) currently an intern  at Khurana & Khurana, Advocates and IP Attorney,  in case of any queries please contact/write back to us via email vidushi@khuranaandkhurana.com.

 

 

Leave a Reply

Your email address will not be published.

9 − 5 =

Archives

  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • October 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010