NO to Counterfeiting and Piracy

This article first appeared in The Watermark Journal Vol 24 No 1 (March 2007)

Customs Services throughout the world manage and protect their countries’ borders, working to detect and deter the movement and trafficking of illegal goods such as illicit drugs, endangered species, nuclear/hazardous waste, weapons and goods which contravene the intellectual property rights (IPR) of third parties (counterfeit and pirated goods).

The trade in counterfeit and pirated goods is a global concern and it is estimated that the total world trade in fake goods now exceeds US$500 billion1 . This illegal trade is placing increasing pressure on Customs to intercept counterfeit and pirated goods and the theme for International Customs Day 2007 was “NO to counterfeiting and piracy”1 reflecting the magnitude of the problem.

The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) describes the role and responsibility of Customs in IPR enforcement and recognises the importance of border enforcement procedures. Countries which have fully implemented the TRIPS Agreement have national laws which give Customs the power to seize infringing and counterfeit/pirated goods.

The Australian Trade Marks Act 1995 gives the Customs CEO the power within the Customs control zone (border) to seize and deal with goods that are imported into Australia if the importation infringes, or appears to infringe, a registered trade mark provided that the registered trade mark owner has notified Customs of its rights. Similarly, the Australian Copyright Act 1968 gives the Customs CEO the power to seize and deal with infringing copyright material provided that the copyright holder has notified Customs of its rights. Both Acts include provisions which allow the registered trade mark owner or the copyright holder, and in certain circumstances, the authorised/licensed user of a right, to lodge a Notice of Objection with Customs, objecting to the importation of goods which infringe their rights. This notice must provide details and evidence of the owners’/holders’ rights.

Up until recent amendments to the Australian Trade Marks Act 1995 and Australian Copyright Act 1968 a Notice of Objection was in force for 2 years only and there was a requirement to provide a cash or documentary security at the time of filing the Notice of Objection. This security, A$10,000 in the case of trade marks and A$5,000 in the case of copyright was for any Customs expenses incurred in seizing and dealing with infringing goods.

Australian Customs recently initiated changes to both the Australian Trade Marks Act 1995 and Australian Copyright Act 1968 to encourage use of the Customs objection scheme. The most significant of these changes are: 

• A Notice of Objection will be in force for a period of 4 years rather than 2 years. This change applies to all trade mark notices lodged from 23 October 2006 and all copyright notices from 1 January 2007;
• Provision for a registered trade mark owner or copyright holder to provide a written undertaking as security rather than a cash/documentary security at the time of filing a Notice of Objection. Effective 1 January 2007 it is no longer a requirement to provide a cash/documentary security when filing a Notice of Objection under the Australian Copyright Act 1968 and any security currently in place may be refunded/returned on request provided a valid written undertaking is held by Customs. It is expected that the equivalent provisions under the Trade Marks Act will take effect on 27 March 2007.

The owners’/holders’ of IPR in Australia should file a Notice of Objection with Australian Customs as a measure to protect their IPR. The legislative changes discussed above reduce the administrative and costs burden to owners’/holders’ in using the scheme.

Message from the World Customs Organisation Secretary General, Michel Danet, 22 January 2007