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5 October, 2017
Counterfeiting is not restricted to any jurisdiction exclusively. It is a very serious issue in the global world economy where the mass production of infringing goods being done at one nation and imported to other nations. These importation activities of Counterfeited and pirated products substantially affect the economic position of a particular business and in some cases may cause the withdrawal of a famous international brand from a particular national market, as it undermines those famous brands to such an extent that they are unable to exploit their products economically in a particular market. The government and the end consumers are also negatively affected by the imported counterfeited goods as such products generally remain out of the tax ambit and cause confusion in the minds of the consumers. The quality which was expected from the product generally suffers as well.
The reasons mentioned above makes the enforcement of intellectual property rights against the importation of counterfeited and pirated goods, a matter of extreme importance not only in India but also in other jurisdiction. Border security measures are meant to keep a check on the IP infringing products entering into the jurisdiction concerned. It can serve as an effective remedy to tackle the issue of counterfeiting at a nascent stage in a particular nation because it is comparatively easier to restrict the infringer at the border than to cease the subsequent circulation of infringing products.
In India, border security measures are carried out by the Customs authorities. The Central Board of Excise and Customs under the Department of Revenue deals directly with I.P.R. issues The Customs authorities have the statutory power to prohibit the import or export and also confiscate the counterfeit or pirated goods that infringe IP rights of the right holder which are granted under the scope and ambit of the prevailing IP statutes in India.
The Government of India has enabled IP owners to enforce their IP Rights at Indian Borders under Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007. For this, it is mandatory to have a validly registered trademark/IP right in place. The period of protection available under Customs is 5 years from the recordation of rights with the Customs authorities or upon expiry of the validity of registration of the mark/IP right, whichever is earlier.
Procedure for the protection of IP rights against the import of infringing goods:
As per the procedure, a notice can be given to the Customs authorities after the trademark has been registered for initiating action against importers of counterfeit goods falsely bearing the mark. Separate applications have to be submitted for each IP right sought to be documented. In case of online registration hard copies of the uploaded documents have to be submitted to the IPR cell of the Custom House in the prescribed format.
On the receipt of application the Commissioner of Customs will verify the information provided by the applicant. He may ask for the additional information from the applicant if required. The registration will be granted only after the complete verification of the application by the Commissioner of Custom and also have the power to reject the application which results in denial of the protection of IP rights against the import of infringing goods by the Custom authorities and the registration can be cancelled at any moment if it is found that the applicant has furnished wrong or false information.
Procedure after the suspected goods detained
On the detainment of the suspected infringing goods the Customs authority will inform the importer and the IP right holder about the suspension of clearance. The right holder must join the proceedings within the statutory time limit and provide the documentary proof for examining whether the goods detained are infringing or not. However, if the right holder did not respond or did not join the proceedings within the statutory time limit, the goods may be released by the Customs authorities, provided the importer complied with all other conditions of import but in case of receiving the reply from the right holder within the time limit, the Customs authorities will issue a show cause notice to the importer of the goods. The proceedings for the determination of infringement will take place where the importer will be given an opportunity to present his case. If the goods are found to be infringing in nature, the order of confiscation will be passed by the adjudicating authority. Provisions related to appeal provided in the Customs Act can be applied in case of such an order. In case the goods are concluded as infringing goods, then after confiscation those goods are either destroyed or disposed outside the normal channels of commerce after obtaining ‘no objection certificate’ from the right holder.
The main motive behind registering the IP right(s) with the Customs authorities is to make sure that the right holders do not incur any losses due to the import of infringing goods and India as a country does not strengthen the counterfeiting industry.
Further the import or export of infringing goods not only results in absolute confiscation but also attracts penalties imposed against the importer or exporter as per statutory provisions.
This article was first Published in IAM
For further information, please contact:
Aniruddh Singh, LexOrbis
mail@lexorbis.com
