Australia: Protecting your brand at the border

As an intellectual property rights owner of, it is important that you are vigilant about protecting your intellectual property from infringement and maintaining the reputation and value of your brand and/or products. Counterfeit products which are imported in Australia can impact on and undermine the growth of a brand and its presence. The Australian Department of Immigration and Border Protection however does provide some comfort to brand owners against counterfeit importation by giving them the option of lodging a Notice of Objection to stop the flow of counterfeit products at the border.

What is a Notice of Objection ("Notice")?

A Notice is a document that allows the Australian Border Force to seize imported goods that are suspected of infringing trademark and/or copyright rights that are the subject of the Notice. A Notice is lodged by Intellectual Property owners (or in some cases authorised users) who are concerned about the potential damage to trade, reputation and profits that may result from the importation of goods that infringe their intellectual property. Intellectual Property rights owners with a Notice in place are commonly referred to as 'objectors'.

What can the Australian Border Force ('ABF') do when infringing goods are imported?

With a valid Notice in place, the ABF are able to seize goods that:

  1. are subject to customs control;
  2. are covered by a valid Notice;
  3. appear to infringe on an Intellectual Property owners rights; and
  4. are intended for commercial purposes.

How is a Notice Filed?

In order to file a Notice, the following must be submitted to the Department of Immigration and Border Protection:

  1. a completed Notice Form which includes details of the objector and their intellectual property rights;
  2. evidence of intellectual property ownership such as a registered trade mark or copyright materials; and
  3. a completed Deed of Undertaking ('Deed'). The Deed is a formal undertaking from the objector that they agree to pay any costs incurred by Department of Immigration and Border Protection outside their normal business duties while enforcing the Notice (for example, transportation, storage and destruction costs).

How long is the Notice valid for?

A Notice under the Trade Marks Act 1995 and/or Copyright Act 1968 is valid for four years. A Notice can be re-lodged to ensure ongoing protection, or withdrawn at any time if no longer required.

What happens when goods are seized?

When goods are seized, the importer and the objector will be notified in writing by the seizing officer of the Department of Immigration and Border Protection.

If the importer wishes to make a claim for the release of seized goods, they must do so within ten working days of notification.

If a claim for release is made by the importer, the objector will be notified and will have ten working days to:

  1. commence legal action; or
  2. consent to the release of the goods to the importer.

The importer can voluntarily forfeit the goods at any time before legal action has commenced.

If the objector does not commence legal action and the goods have not been forfeited by the importer, the ABF will release the goods to the importer subject to all other legislative requirements being met. The ABF does not however make the final decision on whether goods are infringing Intellectual Property. This will be determined by the Courts, if an action is commenced by either party, and orders will be made by the Court accordingly. This may include:

  1. releasing the goods to the importer; or
  2. forfeiting them to the Commonwealth.

If the goods are ordered to be forfeited, the ABF will dispose of them as directed by the relevant delegate, usually by destruction.

What are the costs to obtain a Notice?

There are no fees involved in the actual lodgement of a Notice.

In the event that counterfeit goods are seized however, costs will be incurred, and these will depend on factors such as quantity, type of goods and storage.

Notably, if the objector takes the matter before the Court, the objector may be able to recoup some of its costs from the importer as part of the settlement process.

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