Significant amendments to the Australian Customs seizure regime came into force this week. As foreshadowed in our previous Client Alert, the amendments address practical difficulties experienced by intellectual property owners by improving the system for seizing infringing goods, and identifying importers and exporters. Significantly, instead of an IP owner having to press designated owners to forfeit goods, the onus will now be on the designated owner to file a claim for release of the seized goods, failing which the seized goods will be destroyed by Customs.
In addition, the Australian Federal Magistrates Court will now have jurisdiction in relation to trade mark infringement proceedings, providing a potentially streamlined forum for handling Customs matters in limited circumstances where litigation becomes necessary.
Details of the amendments are set out below:
Notices of Objection
Intellectual property owners may authorise Customs to seize goods being imported that infringe their registered Australian trade marks or copyright. This authorisation is provided to Customs in the form of a Notice of Objection which includes a schedule of the intellectual property owners’ registered Australian trade marks and/or copyright works.
Once a Notice of Objection has been recorded, the intellectual property owner (the Objector) is notified by Customs if goods infringing their trade marks or copyright are seized. Lodging a Notice of Objection with Customs is an effective way of monitoring and preventing the importation of infringing goods.
Summary of changes
Under the new procedures, the onus will be on the designated owner (importer) to claim the seized goods, failing which they will be forfeited and destroyed. Pursuant to the previous regime, Customs would provide details regarding the importer to the Objector. Under the new regime, Customs will also be required to provide information about the exporter of the goods to the Objector, and allow the Objector to inspect or remove multiple samples of the seized goods for authentication purposes. If the designated owner claims the seized goods, the Objector will need to seek an injunction to prevent them from being released. An injunction may now be sought in the Federal Magistrates Court, as well as the Federal Court of Australia.
The key changes to Customs procedures, facilitated by the new legislation, are as follows:
once goods are seized, the Objector will be permitted to inspect or remove multiple samples of the seized goods, in return for the Objector providing Customs with an undertaking to return or replace the goods if they are found to be genuine. This is to enable the Objector to make a more accurate determination as to whether the consignment containsinfringing goods;
Customs will be required to give an Objector any relevant information that would assist them in identifying the person or entity (whether in or outside Australia) that made arrangements, on behalf of the designated owner of the goods, for the goods to be brought to Australia;
once a Notice of Seizure is received, and if the designated owner wants to claim the goods, the designated owner will have 10 working days (the Claim Period) to file a Claim for Return with Customs. If a Claim for Return is not filed, the seized goods will be deemed forfeited and subsequently destroyed;
if a Claim for Return is filed, the Objector will need to seek an injunction within 10 business days (the Action Period) to prevent the goods from being released to the designated owner;
if seized goods are deemed forfeited, they will be destroyed after 90 days;
Customs may allow the designated owner to make a Late Claim for the release of seized goods after the end of the Claim Period, in limited circumstances.
Claim for Return
The new legislation introduces the Copyright Regulation 22B and Trade Mark Regulation 13.5, which specify, among other things, that the Claim for Return must include the grounds for seeking release of the seized goods. The Claim For Return is also required to include information which would enable an Objector to contact the designated owner (including their telephone number) and instigate legal proceedings for infringement. Customs will be required to give notice to the Objector of a designated owners’ Claim for Return as soon as practical.
The Customs CEO may allow the designated owner to make a Late Claim to the Customs CEO for the release of seized goods after the end of the Claim Period for the goods.
The Customs CEO may allow the late claim only if:
(a) an action for infringement of the notified trade mark in respect of the goods has not been instituted;
(b) the Customs CEO considers it reasonable in the circumstances; and
(c) the goods have not yet been disposed of.
In the event a Late Claim is permitted, Customs will advise the Objector of the Late Claim as soon as practical, and the Objector will need to seek an injunction to prevent the goods from being released to the designated owner. The time restraints for this procedure will be the same as if a Claim for Return was filed.
The changes are embodied in Schedule 5 of the new Intellectual Property Laws Amendment (Raising the Bar) Act 2012 and Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1), which amend the following legislation:
Trade Marks Act 1995 (Cth)
Trade Marks Regulations 1995
Copyright Act 1968 (Cth)
Copyright Regulations 1969
These amendments are positive for IP owners and will improve mechanisms for trade mark and copyright enforcement.