Raising the Bar on the importation in to Australia of goods infringing trade mark and copyright

Raising the Bar on the importation in to Australia of goods infringing trade mark and copyright - Griffith Hack

28 March 2012

Brand owners advised to be vigilant and take advantage of the forthcoming amendments to the Customs Seizure provisions of Australian Trade Mark and Copyright legislation.

An owner or licensed user of a trade mark or copyright work may file a Notice of Objection with Customs (Customs Notice). Customs monitors all goods imported into Australia and will seize goods that infringe any registered trade marks or copyright recorded in the Customs Notice. This can prevent goods which infringe intellectual property rights from reaching the Australian market, and acts as a deterrent to counterfeiters.

The efficiency of a Customs Notice is now to become even more beneficial for trade mark and copyright owners in light of the passing last week of the
Intellectual Property Laws Amendment (Raising the Bar) Bill 2011. This legislation will amend the Trade Marks Act 1995 (Cth) and the Copyright Act 1968 (Cth) to:

1)
place new burdens on the importer of the seized goods – the importer must now make a claim for the release of the seized goods within a specified period, otherwise the goods will be automatically forfeited to the Commonwealth and destroyed. This is in contrast to the current system where the burden is on the IP owner to encourage the importer to forfeit the goods and to institute legal proceedings to stop the goods being released if no consent to forfeiture is provided. Under the new and more effective system, if the importer wishes to make a claim for release of the seized goods they must provide contact details and an address where legal documents can be served. A note will also be provided in the legislation referring to offences for providing false information to Customs officers, providing a greater deterrent against importers providing false information on a claim for release of seized goods;

2)
enable details of the exporter or any other person or body (whether in or outside Australia) that made arrangements for the seized goods to be brought to Australia (in addition to those of the importer) to be released. Such information can usually only be obtained by a court order; and

3)
permit the removal by or on behalf of the IP owner of one or more samples of the seized goods from the custody of Customs for inspection. This will allow IP owners to obtain greater information about the seized goods, including how counterfeit goods are concealed, packaged and imported in to Australia.

In addition to the above, the Raising the Bar Act will amend the Trade Marks Act 1995 (Cth) to:

a.
increase the maximum penalty for indictable trade mark offences to imprisonment for 5 years and 550 penalty units ($60 500 for an individual or $302 500 for a body corporate). Trade Mark offences include falsifying or removing a trade mark, falsely applying a registered trade mark, making or possessing equipment or drawing a registered trade mark for use in committing a trade mark offence, and selling, possessing or importing goods in to Australia bearing a trade mark that was applied without the permission of the trade mark owner;

b.

introduce a new class of summary offences with lower penalties where the fault element is negligence; and

c.

provide for the award of additional damages (that are punitive in nature) where a court finds that a trade mark has been flagrantly infringed.

If you are the owner or licensed user of any trade marks or copyrights in Australia that have the potential to be copied,it is important that you have a Customs Notice in place in respect of these valuable and long-lasting intellectual property rights. Such a Customs Notice will now be even more cost effective in enforcing your IP rights (as most of the enforcement is conducted by Australian Customs) and act as an even greater deterrent to international counterfeiting now that the Raising the Bar Bill is set to become law.

To arrange for Griffith Hack to file a Customs Notice on your behalf please contact:

Wayne Condon, Principal
Email Wayne