INTRODUCTION
In order to prevent counterfeiting and infringing good from entering into the Indian market, registered proprietor of trademark can file application for recordation of a trademark at the Custom Authorities. Custom authorities can tackle cross-border counterfeiting and infringement of trademark rights of a registered proprietor and stop the importation of infringing products before they reach the Indian markets.
Process
DOCUMENTS/ INFORMATION REQUIRED
Following documents are to be submitted along with the application form:
- Proof of ownership of the trademark and a scanned copy of the registration certificate.
- Serial number of the demand draft of INR 2000/-. The demand draft must be issued by any nationalized or scheduled bank in India and made out in favour of the Commissioner of Customs of the opted location.
- Scanned copy of power of attorney in favour of counsel / advocate / agent who is filing the Application.
- A statement of exclusivity outlining the scope of the trademark right sought to be recorded.
- Digital images of genuine goods (for trademarks)
- Statement of grounds of suspension of infringing goods.
- Digital images of infringing goods (if applicable/available).
- Differentiating features of genuine and infringing goods (not mandatory but advisable).
- The IEC code of the rights holder and/or other authorized importers (not mandatory but advisable).
- Customs Tariff headings of the applicable goods (if available).
- The General Bond or Centralised Bond
FAQS
Counterfeit marks include marks that are 'substantially indistinguishable' from a genuine mark. The Trademark Act 1999, though not specifically addressing the offence of counterfeiting, enumerates the offences of 'falsifying a trade mark' and 'falsely applying a trade mark', which may be seen to overlap with the nature of trade mark counterfeiting.
In order to limit the adverse effects of counterfeit and unauthorised imports, the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007 was issued by the Government of India. This provides a mechanism for registration of trade marks with the Central Board of Excise and Customs (CBEC). Registration with CBEC empowers the Customs Authority to intercept, seize, and confiscate goods found to be or suspected to be infringing trademark rights registered and in force in India by any person other than the trademark rights holder or without permission or authorisation of the trademark rights holder.
Under the said Rules, registration is obtained by filing a notice for protection of trademark rights with the commissioner of Customs to suspend the clearance of infringing or counterfeit goods. Once registered, the Customs Authority stores the trademark rights in their electronic database which is flashed across all entry points in India. Custom officials can detain the counterfeits before they enter circulation, either on the basis of the registration appearing in the electronic database or even suo motu in the interest of the trade and protection of trademark rights By making one application, the applicant can cover all the Custom air cargo complexes, seaports and land Customs stations through which importation or exportation of pirated articles in India is suspected.
Parallel Imports constitute import of Non-Counterfeit or Genuine Goods from one country to another without the permission of the IP owner. The products are indeed legal but are unauthorized because they are imported without the permission of the proprietor.
Subject to conditions and procedures as specified in the Rules, import of the following goods is prohibited:
- Goods having applied thereto a false trademark as specified in section 102 of the Trademarks Act, 1999
- Goods having applied thereto a false trade description within the meaning of clause (i) of sub-section (1) of section 2 of the Trademarks Act, 1999