Risk of infringing imports? Consider an Australian Customs notice

Take home message

• If you are the owner of registered trade marks, and at risk of counterfeit products being imported into Australia, a Notice of Objection filed with Australian Customs provides an extra level of protection.
• Customs will seize infringing goods to temporarily stop the importation and distribution of the goods into the marketplace.
• The Objector and Infringer are notified of the seizure. The Infringer can agree to forfeit the goods, which often occurs in cases of clear infringement, otherwise the Objector has the opportunity to commence infringement proceedings.
• Your trade mark attorney can assist in putting this straightforward and cost effective process in place with Australian Customs.

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

Objector details

The details required for completing the Notice of Objection form are:

• Full name of the company lodging the Notice. This should be the same name as the owner of the trade mark registration.
• If the Notice is filed on behalf of an Authorised User, it is necessary to file an Authorisation letter provided by the registered owner.
• For non-Australian companies it is necessary to provide the Customs Client ID (CCID).
• Full address of the company lodging the Notice, which should be the address registered with Customs against the CCID.
• Details for the company and contact person in Australia who will be advised by Customs of any seizures made. The address provided must be a physical address, together with an email address.

Trade mark schedule

• A schedule containing the trade mark registration number, expiry date, class and description of goods for each trade mark to be covered by the Notice should be included. This needs to be accompanied with evidence of registration for the trade marks to be covered, namely, printouts from the IP Australia database.

Security

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.

• The Deed must be executed by Objector company
• Details required for completing the Deed:

1. The date the Deed is signed (executed)
2. Full name of the company providing the Deed
3. Full address of the company providing the Deed

Additional information

• A list of companies or individuals authorised to import goods bearing the trade mark covered by the Notice should be provided.
• Any information which may assist Customs to enforce this Notice (e.g. companies or individuals importing alleged infringing goods into Australia, including any particulars of shipments due to arrive), should be emailed to iprights@customs.gov.au as soon as this information is known.

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:

• The Objector has the option to commence legal action; or
• The Objector can consent to the release of the goods to the Importer
• If the Objector does not commence legal action within the action period, Customs must release the goods unless they have been voluntarily forfeited by the Importer.

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.