INTRODUCTION
The Customs Act, 1962 regulates the import and export of goods through provisions provided under Section 44-51 of the Act. Further, Section 11 of the Act strengthens trademark enforcement as it empowers the government to enforce prohibition on the import and export of certain goods to protect trademarks and gives power to the custom officials to confiscate goods imported or exported, unlawfully or illegally. The Government of India had notified the ‘Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007’ with a view to bolster the Customs Act and provide remedies to protect trademark at borders. Thus, importing of infringing goods is prohibited under the Customs Act 1962, read with the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007. Border protection measures or measures at the ports are very essential to ensure that counterfeit products are not being exported from India and not being imported to India.
ANTI-COUNTERFEITING REGULATIONS UNDER THE INTELLECTUAL PROPERTY RIGHTS (IMPORTED GOODS) ENFORCEMENT RULES, 2007
The Intellectual Property Rights Rules, 2007 empowers the competent authority of Customs to seize counterfeit/ pirated goods or suspend the clearance of such goods at the port. The Rules additionally empowers the Custom Department to destroy goods infringing trademark rights of the registered proprietor. Ownership of valid trademark is a mandatory requisite for availing border protection under the above Rules.
ENFORCEMENT ACTIONS
Anti-Counterfeiting regulations under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007
The Rules empowers the competent authority of Customs to seize counterfeit or suspend the clearance of such goods at the port. The Rules additionally empowers the Custom Department to destroy goods infringing trademark of the registered proprietor. The right holder has to send a notice for protection of its registered trademark to the concerned authority for suspending the clearance of counterfeit goods.
Under the rules, infringing goods are defined as "goods which are made, reproduced, put into circulation or otherwise used in breach of the intellectual property laws in India or outside India and without the consent of the right holder or a person duly authorized to do so by the right holder".
Under these rules, a trademark right holder may give notice in writing to the Commissioner of Customs or any Customs officer authorized in this behalf by the Commissioner, requesting for suspension of clearance of goods suspected to be infringing his trademark rights. Such notice shall be given in the format prescribed in the Annexure to the Rules and all the information required in the notice should be furnished within 15 days. Such notice should be registered or rejected within 30 working days of the date of receipt of the notice or date of expiry of extended 15 days period provided for furnishing information required to be filed with the notice. In case the notice is registered, the minimum validity period shall be one year unless the noticee or right holder requests for a shorter period for customs assistance or action. The grant of registration of the notice is subject to following conditions:
- Right holder or his authorized representative shall execute a bond with the Commissioner of Customs for such amount with such surety and security as deemed appropriate by the Commissioner, undertaking to protect the importer, consignee and the owner of the goods and the competent authorities against all liabilities and to bear the costs towards destruction, demurrage and detention charges incurred till the time of destruction or disposal, as the case may be;
- The right holder shall execute an indemnity bond with the Commissioner of Customs indemnifying the Customs authorities against all liabilities and expenses on account of suspension of the release of allegedly infringing goods.
Custom Authorities can suspend clearance of suspected goods if the Deputy/Assistant Commissioner of Customs has a reason to believe that the imported goods are suspected to be goods infringing trademark rights. Thereafter, the Deputy/Assistant Commissioner of Customs shall immediately inform the importer and the right holder of the suspension of clearance of the goods and shall state the reasons for such suspension. Goods suspended on the basis of a notice given by the right holder, can be released if the right holder fails to join the proceedings within a period of ten working days (extendable by another 10 days) from the date of suspension of clearance. In case the clearance of goods was suspended on Customs own initiative, such goods shall be released within five working days from the date of suspension of clearance, if the right holder fails to give notice or fails to execute the bond. In case of perishable goods, the period of suspension of release is three working days, extendable by another four days.
In case the Deputy/Assistant Commissioner of Customs determines that the goods detained or seized have infringed trademark rights, and have been confiscated under Section 111 (d) of the Customs Act, 1962, he shall destroy such goods under official supervision or dispose them outside the normal channels of commerce after obtaining 'no objection' or concurrence of the right holder. The right holder can raise objection on the mode of disposal within 20 working days (extendable by another 20 days) after having been informed so.