On 15 April 2013 many of the provisions of the Intellectual
Property Laws Amendment (Raising the Bar) Act 2012
("Raising the Bar Act") came into effect.
Rights holders (Objectors) will be particularly interested in
the changes to Australian Customs seizure procedures in relation to
trade marks and copyright.
The changes brought about by the Raising the Bar Act are
Seizure of Goods
Previously, the Designated Owner of goods suspected of trade
mark or copyright infringement was notified that the goods had been
seized by Customs. The seized goods were subsequently released to
the Designated Owner if the Objector did not institute legal
proceedings within 10 days of receiving notice of the seizure, or
if the Designated Owner had not agreed to forfeit the seized
The Raising the Bar Act significantly changed the process
involved in seizing goods suspected of trade mark and/or copyright
infringement by putting the responsibility on the Designated Owner
of the seized goods to take action for the release of those goods.
The Designated Owner will now only be able to reclaim the seized
goods if it provides the Objector (via Australian Customs) with
information sufficient for the Objector to identify and contact the
Designated Owner/Importer of the goods.
Harsher penalties have also been introduced in order to deter
counterfeiting. The maximum penalty for counterfeiters has been
increased from 2 years to 5 years imprisonment and exemplary
damages can now be imposed by the Courts.
As at 15 April 2013, the following changes took effect:
The Designated Owner must make a claim for the release of the
seized goods within 10 working days of receiving the Notice of
Seizure from Customs. The claim for the goods must provide
sufficient contact details of the sender of the goods if the
Designated Owner wishes to be successful in its claim for the
release of the goods.
If the Designated Owner makes a claim for the release of goods
then Customs must notify the Objector and the Objector will have 10
working days to institute proceedings against the Designated Owner
or persuade the Designated Owner to agree to forfeit the goods. If
this does not occur then the goods will be released to the
The Objector may inspect the seized goods and, subject to the
provision of any requested undertakings, may remove multiple
samples of the seized goods for further inspection/testing in order
to accurately assess whether the seized goods infringe the
If the Objector has instituted legal proceedings against the
Designated Owner within the 10 working days of receiving notice
from Customs that the Designated owner has made a claim for the
seized goods, and notified Customs of the proceedings, then the
seized goods will not be released to the Designated Owner.
If no claim for the seized goods is made by the Designated
Owner, then they are automatically forfeited to the
Forfeited goods will be disposed of after the expiration of 30
days since the forfeiture of the goods. Similarly, where a claim
for release is made by the Designated Owner who fails to collect
the goods within 90 days, the goods are then forfeited to the
Provision of information
Currently Customs notifies the Objector of the following
information when goods suspected of trade mark or copyright
infringement are seized:
a description of the seized goods (possibly photos); and
the full name and address of the person whom the goods are
being shipped to (the Designated Owner of the goods).
From 15 April 2013, the Objector will also be provided with:
the details of the sender of the goods (i.e foreign supplier or
exporter) and any other personal information that may assist in the
identification of the sender of the goods; and
any information that Customs may have on record about the
Designated Owner of the goods.
What you need to know
These significant changes to the powers of Customs in dealing
with seized goods is likely to result in far more counterfeit goods
being forfeited, and greater protection of the rights of trade mark
and copyright rights holders.
Further, rights holders will now be given information identifying
the source of the counterfeit goods which should assist in
identifying and taking steps against those parties if required. If
you have Customs Notices in place, then these changes will
automatically take effect. If you have copyright or trade mark
rights covered by the Customs Notice Procedures, then you should
consider lodging relevant Notices and taking advantage of these
changes to assist in your brand protection and anti-counterfeiting
strategies in Australia.
The assistance of Melissa Corbutt, Solicitor, of Addisons in the
preparation of this article is noted and greatly appreciated.
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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It will be harder for importers to obtain TCOs and easier for local manufacturers to seek revocation of existing TCOs.
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