Posted On: January 23, 2023

BORDER CONTROL MEASURES FOR ENFORCEMENT OF IP

global IPR protection

Owners and authors of intellectual property are under the continuous threat of counterfeit goods in the market, which is growing exponentially with advancing technology and surging cross-border trade among countries. It is important for intellectual property rights owners to monitor and take suitable and timely action against imports that may be infringing upon their rights. The first step to effectively protect one’s intellectual property rights is to get the same registered. In case of threat across borders, border control measures need to be adopted. At Knowledgentia Consultants, our experts offer most effective counterfeiting legal action in the form of border control measures for enforcement of IP.

WHAT ARE BORDER CONTROL MEASURES?
Border control measures are one of the legal measures that IP rights holders can undertake for enforcement of IP at the borders. They are basically actions undertaken by the local customs authorities with respect to goods under their control, in particular, but not exclusively, at the exit and the entry of goods into the internal (national or economically integrated) market.

In this respect, it has to be understood that the final destination of goods going through customs may not always be the domestic market in question. There are various possible customs situations and procedures such as importation, exportation, re-exportation, placement under a suspensive procedure, or simple control. Either way, border measures are an effective method to combat the activity of infringement. They can support stop the circulation of counterfeit or infringing products at the border rather than at a later stage when they have started circulating in the market to make their way to the consumers.

Border control measures can broadly be stated as procedures applied by countries that enable the respective municipal customs and IP law frameworks to place an embargo on the influx of counterfeit or pirated goods in and out of their respective domestic, commercial markets.

The Government of India under Section- 11 of the (Indian) Customs Act, 1962 is empowered to prohibit importation and exportation of goods of specified description, if it deems necessary to do so. The provision, inter alia, empowers the government to prohibit the import or export of goods for “the protection of patents, trademarks and copyrights”. The goods imported in contravention of the provisions of the Customs Act or any other laws for the time being in force are liable to be confiscated. In this regard, a customs officer is empowered to inspect any premises, conveyance, x-ray any person and effect search and seize in case where they have reasons to believe that the goods are of contraband nature. They can also investigate or interrogate any person and arrest him.

Traditionally, the customs authorities’ role has been one of a gatekeeper, i.e., acting as a barricade through which international trade must pass, in a bid to protect the interests of the country. Customs have the responsibility of executing a broad array of government policies, covering areas as varied as revenue collection, trade compliance, and facilitation, banning of prohibited substances, protection of cultural heritage, and enforcement of IP laws. In recent times, due to the growth of trans-border commerce, the role of customs in restricting infringing products has become more and more significant. Each nation’s customs authorities are given specific administrative powers to help them deal with counterfeit or infringing goods. Customs intervention is thus intended to handle goods in trans-border transit when they are under suspicion of infringing IP such that when the infringement is proven, they can be destroyed and removed from the supply chain. Few jurisdictions offer a trademark recordation system with customs. Recording one’s trademarks allows the customs to monitor shipments and exclude, detain, seize, destroy, or dispose of merchandise that it suspects is counterfeit or infringing the recorded trademark.

THE INTERNATIONAL BASIS OF BORDER CONTROL MEASURES
The TRIPS Agreement lays down the method of governing border control measures and protecting the Intellectual Property Rights, through which the customs authority of a country is empowered to stop the entry and exit of goods, which violate the IP laws. The procedure is set out in Articles 51 to 60 of the TRIPS agreement. Article 51 of the Agreement is the primary provision, which enforces cross border measures to protect IP. This provision authorizes the rights holder, who has valid grounds for believing that the importation of counterfeit trademark or pirated copyright goods may take place, to apply with relevant authorities, administrative or judicial, for the suspension of release into free circulation of such goods.

To enable this provision, Article 52 mandates that the applicant has to provide evidence, which prima facie makes a case of infringement of the Intellectual property rights and also offers a description of the goods for their quick recognition by the customs authorities. The applicant has to prescribe the period for which such goods will be suspended from circulation. The authority has the power to scrutinize the merits of the application and subsequently accept or reject it. Article 53 provides that after the scrutiny and acceptance of the application, the applicant may be asked to provide security for the duration of the suspension of the goods in question. Article 53.2 provides that the suspended goods may be released if the defendant pays a sufficient amount to protect the rights holder for any infringement as security. This amount should ideally not be unreasonable and also should not prejudice any other remedy available to the rights holder. If the rights holder fails to pursue the right of action within a reasonable period, the security amount shall be released by the authority. Furthermore, there are provisions for the issuance of notice to all the affected parties and adjudication by a competent authority.

BORDER CONTROL MEASURES IN PRACTICE IN INDIA
Goods traveling across global markets are largely required to follow the IP regulations. However, an enormous percentage of these goods do not follow international standards or are simply counterfeit goods. There is extensive infiltration in the international market of such goods. Piracy and counterfeiting activities represent between 5% and 7% of world trade. Knowledgentia Consultants, which is one of the best firm for global IPR protection, we offer all kinds of advisory services for helping our clients recordal of IP with Custom.

DOCUMENTS/INFORMATION REQUIRED:
An e-portal facilitates easy recordal of IP rights with the Customs Authorities. The Right Holders are required to submit the following information/documents:

  • Name and contact details of the Right Holder;
  • The serial number and details of the demand draft in favor of the Commissioner of Customs;
  • Details regarding the scope of the IP right which the Right Holder is intending to register;
  • Details regarding the differentiating features of genuine and infringing goods;
  • The IEC code of the Right Holder and other authorized importers;
  • In case of geographical indications – description of the GI, the area of production;
  • Grounds for the notice of suspension of the release of the goods allegedly infringing intellectual property rights;
  • A detailed description of the goods with Customs Tariff Heading in respect of which an intellectual property right applies, together with a sample, model or photograph of a genuine product; and
  • Product code of the goods been imported/exported

PROCEDURE FOR REGISTRATION:
An IP Right Holder must notify Customs Authorities in writing, requesting for suspension of clearance of goods alleged to be infringing IPR, accompanied by fees of INR 2000. If the paperwork is in order, Customs Authorities will register the notice of the Right Holder and issue a Unique Permanent Registration Number (UPRN). This process takes up to 30 days. The minimum validity period is one year unless the Right Holder requests for a shorter period of customs assistance.

The grant of registration under Rule 4 is subject to the following conditions:

  1. the right holder or his authorised representative must execute a bond with the Commissioner of Customs for an amount 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;
  2. 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.

After the grant of the registration of the notice, the import of allegedly infringing goods into India is deemed as prohibited within the meaning of Section 11 of the Customs Act, 1962.

INTELLECTUAL PROPERTY RIGHTS (IMPORTED GOODS) ENFORCEMENT RULES, 2007
India has notified the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007. The rules comply with border measures as required by the TRIPS Agreement empowering the Customs Officers to enforce IPR over the imported products. Actions under Customs Act are independent to the remedies provided under various statues on Intellectual Property. As per rule 2(b) of the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, Intellectual Property includes patents, designs, and geographical indications together with trademarks and copyrights.

CONCLUSION
Today, counterfeiting and piracy have an impact on a wide range of goods, ranging from aircraft parts, detergent, alcohol, perfumes to even medicines. Every industry is prone to counterfeiting. Earlier, only luxury brands were the main target; however, today, even our everyday consumer goods face the risk of counterfeiting. The kind of goods counterfeited is growing continuously with the evolving market trends. Today, counterfeiters are making widespread use of the internet to distribute fake goods. A broad range of counterfeit goods is available even on the most popular e-commerce websites such as Amazon, which puts the customers and trademark owners at very high risk. Knowledgentia Consultants has earned a name as one of the most client focussed trademark and brand registration firm in India. Providing best counterfeiting legal action services, we are your one-stop solution for all kinds of legal, compliance and supplemental matters concerning registration as well as counterfeiting of trademarks and brands. In case of any query regarding this matter you may email us at info@knowledgentia.com or visit our website –https://knowledgentia.com/.

Inderpreet singh
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