Australians might be alarmed to know that counterfeit goods are
entering Australia every day including in the areas of healthcare,
food and beverages. Changes to current Customs Notice provisions
are designed to help stem the flow.
International customs and border protection organisations are
increasingly collaborating to manage the volume of counterfeit
trade. For example, Australian Customs and Border Protection and US
Customs Border Protection are cooperating on measures in various
areas. A recent focus on the technology sector has seen the two
organisations identify a number of brands where international
efforts would be assisted by Australian Customs Notices of
Objection (Customs Notices).
Customs Notices and proposed changes in the favour of brand
For Australian Customs to detain goods at the border as
suspected counterfeits, which infringe protected trade marks, a
Customs Notice must be filed by the trade mark owner. To file a
Notice, the trade mark/s must be registered with IP Australia.
The Customs Notice enforcement system applies to commercial
quantities of goods. Overall, the process is relatively inexpensive
and can result in the seizure of substantial quantities of
Under the current process, the onus is on the trade mark owner
to establish that the seized goods are counterfeit. This will
shortly be improved to reverse this onus. The change will come into
force in April 2013, requiring an importer of seized goods to
establish the goods are not counterfeit.
Briefly, the current process is as follows:
A Customs Notice application must be filed with the Australian
Customs Service detailing the registered trade mark rights on which
the Notice is based. The general customs recommendation is to list
all of your registered marks to ensure a wide net
for counterfeit goods can be cast;
Notices cover a period of 4 years from lodgement, but can be
withdrawn at any time. It is anticipated that any customs notices
in place when the new provisions come into force will simply
The Customs Service will only place the watch over commercial
quantities of goods. This may not catch purchases from overseas
based sales websites, which often send orders directly to the end
consumer from outside of Australia (that is, goods are not imported
into Australia in commercial quantities);
The objector needs to provide a list of companies or
individuals authorised to import goods bearing the trade marks so
that their goods are not inadvertently seized;
If a suspect shipment is seized by Customs, and the importer
refuses to forfeit the goods to the objector, the objector has 10
days to commence legal action against the importer (during which
time the importer can voluntarily forfeit goods to the
Commonwealth). This 10 day period may be extended by a further 10
At present, an objector must act quickly for the seizure to be
effective, unless the importer voluntarily forfeits the goods.
Currently, in practice we find that the importer will simply sit
tight until such time as infringement proceedings are commenced as
the goods will be returned to them in the event proceedings are not
started in time.
Under the new 2013 provisions, this will no longer be an option
for importers, as goods will automatically be forfeited to the
Commonwealth unless the importer files a Claim for Release with
Customs within a designated "claim period" (this period
has yet to be settled).
Brand owners and consumers will be pleased to know that action
is being taken to stem the increase in counterfeit products
entering Australia. For the proposed improvements to Customs
Notices to be effective, brand owners must continue to register
their brands with Customs to empower the seizure of suspected
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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