Risk of Infringing Imports? Consider an Australian Customs Notice
Take Home Message
How it works
Trade Marks Act 1995, Olympic Insignia Protection Act 1987 and the import provisions under the Copyright Act 1968, allow the Australian Customs and Border Protection Service (Customs), to seize goods that infringe trade marks, copyright and protected Olympic expressions (IP) under certain circumstances. The controlling document is the Notice of Objection, a legal document which is submitted to Customs by an IP owner, called the Objector, and is valid for a four year period and able to be updated and re-lodged.
If a Notice of Objection is in place, Customs will seize goods if they appear to infringe a mark in the Notice, and if it appears they are intended for commercial purpose. Customs has hundreds of Notices of Objection in its system, as many global companies use the service including Givenchy, Sandisk, Rolex, The Wiggles, The Décor Corporation, Apple, and Bvlgari. There is no limit to the number of IP properties that can be included in the Notice.
For the purposes of this article, I discuss Notices of Objection in relation to Trade Marks, but the Notices for other IP are similar.
What is needed to Lodge a Notice of Objection
The details required for completing the Notice of Objection form are:
Trade mark schedule
This is a Deed of Undertaking (Deed) provided to Customs, whereby the Objector undertakes that it will pay any costs incurred by Customs while enforcing the Notice.
Process of seizing goods by Customs
Customs will seize imported goods that allegedly infringe a registered mark where a Notice has been lodged. When goods are seized the Importer and the Objector will be notified in writing. The Importer must make a claim for release of seized goods within ten working days of notification. If no claim for release is requested, the goods are forfeited. Alternatively, at any point, prior to the commencement of legal action, the Importer may voluntarily forfeit the goods.
If a claim for release is made, the Objector will be notified and will have ten working days to commence legal action. This is called the “action period”. Before the end of the action period:
At the conclusion of any legal action, the Court will make an order about the goods – either order the goods be released to the Importer or that they will be forfeited to the Commonwealth. Customs will dispose of the forfeited goods as directed by the Customs CEO, usually by destruction or donation to a charity, as appropriate.
The Benefits of a Notice
A Notice of Objection is an additional tool available to trade mark owners, to protect their marks against piracy. Australian Customs is a keen participant in efforts to prevent the importation of counterfeit products, especially if counterfeit products can result in health risks (in the pharmaceuticals, foods, personal care and cleaning products), or safety risks (such as vehicle parts, toys, machinery and tools).
The Australian Government, hence Customs, recognises the damage to the Australian economy by the growth in counterfeit products imported into the country. For this reason the Notice of Objection process is simple, the timeframes for action are reasonable, and anecdotally, the seizure of infringing goods frequently leads to the infringer forfeiting the goods, which is a cost effective outcome.
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