Australia: Protecting yourself against imports that infringe your trade marks or copyright

In brief – Changes to the customs seizure scheme have benefits for rights holders

A higher percentage of counterfeit goods will be forfeited by importers under the new customs seizure scheme. Holders of copyright and registered trade marks will be able to obtain more information about importers and distributors of counterfeit goods. The flowchart at the end of this article sets out the new scheme.

Customs seizure scheme improved under Raising the Bar reforms

The Australian Customs and Border Protection Service (Australian Customs) administers a customs seizure scheme to help control the import of counterfeit goods into Australia.

Recent changes to the customs seizure scheme (as part of the package of Raising the Bar statutory reforms that came into effect on 15 April 2013) have improved the attractiveness of the scheme to registered trade mark and copyright holders. (Please see also our earlier article Streamlining the Australian trade mark opposition process: Raising the Bar reforms.)

Australian Customs estimate that the roughly 80% of intercepted counterfeit goods voluntarily forfeited by importers under the old rules will increase to 90-95% of all seized goods under the new rules.

How does the new customs seizure scheme work?

In summary, you are able to notify Australian Customs of the registered trade marks or copyright works that you would like to protect at the Australian border (a Notice of Objection).

A Notice of Objection covers a period of four years from lodgement and can be withdrawn at any time. Please see the flowchart for more information.

A list of the current notices of objection may be accessed at the website of Australian Customs.

Reimbursing Australian Customs for seizure, storage and destruction costs

You don't have to pay a fee to lodge a Notice of Objection, although rights holders do have to provide Australian Customs with an undertaking to reimburse Australian Customs for seizure (including storage and destruction) costs.

That won't worry larger companies but it does create a potential financial exposure for a rights holder.

What happens when suspected counterfeit goods are seized?

On interception and seizure of suspected counterfeit goods, Australian Customs will notify both you and the importer of the seizure of the goods.

The importer then has 10 working days to lodge a claim for release for the seized goods with Australian Customs.

If no such claim for release is made, the goods are forfeit to the Commonwealth (note there is a late claims process where a late claim for release may be accepted in exceptional circumstances).

Rights holder has 10 days to commence infringement action

On a claim for release being lodged, Australian Customs will notify you. You then have 10 working days (note there is no ability to seek an extension of a further 10 days as used to be the case under the old rules) to commence an infringement action to stop the release of the goods permanently.

If you do not commence any infringement action (and take certain other steps), or any such infringement action is unsuccessful, the seized goods will be released to the importer.

Importers must now lodge claim for release of seized goods and provide current contact details

Under the new rules, the onus is now on the importer to lodge a claim for release of seized goods that must contain current contact details and an address for legal service.

Under the old rules, the onus was on the rights holder to demand the importer voluntarily forfeit the seized goods and, in default of voluntary forfeiture of the seized goods, to commence an infringement action to stop release of the goods to the importer.

There were opportunities for importers under the old rules to provide fake contact details to frustrate legal service and to adopt a "wait and see" approach to see whether a rights holder would go to the expense of commencing court proceedings within time.

Those problems are resolved by the new rules.

Rights holders better able to identify importers and distributors of counterfeit goods

Also, importantly, rights holders are now able to obtain additional information about the importer of the seized goods (and possibly also the exporter) from Australian Customs.

This will assist right holders in better identifying the participants in the manufacture and distribution of counterfeit goods.

[1] Melanie Jose, Manager, Intellectual Property Rights Trade Policy and Regulation, Australian Customs and Border Protection Service "Raising the Bar on Australia's Border Measures – Improvements to the Notice of Objection Scheme Resulting from the IP Laws Amendment (Raising the Bar) Act 2012" (90) [September 2012] Intellectual Property Forum 52 at 61

David Kennedy Alex Rhydderch
Intellectual property
Colin Biggers & Paisley

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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