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
Customs seizure scheme improved under Raising the Bar
The Australian Customs and Border Protection Service (Australian
Customs) administers a customs seizure scheme to help control the
import of counterfeit goods into Australia.
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
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lodgement and can be withdrawn at any time.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.
Reimbursing Australian Customs for seizure, storage and
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
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
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
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
 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
This case set a new benchmark in Australia for future patent infringement damages claims against generic manufacturers.
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