With the advancement of technology and the expansion of the grey-market, India is currently facing large-scale infringement issues which are drastically affecting the Indian Economy. Playing the vivid role of a gatekeeper the Customs Department of India has adopted the Customs Recordal system in furtherance of its aim to forestall the cross-border movement of counterfeit or infringing goods. In exercise of the powers conferred by sub-section (1) of section 156 of the Customs Act, 1962 (Act 52 of 1962), the Central Government formulated the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 consonance with the TRIPS and World Customs Organisation Model.
The aim of recording IP rights with the Customs is to prevent trade in counterfeit or infringing goods. According to Section 2(a) of the 2007 Rules, "infringing goods" means any goods which are made, reproduced, put into circulation or used in breach of the intellectual property laws and without the consent of the right holder or any authorised person.
To record an IP right with the Customs, a right holder must submit an application in writing with the necessary documents and information. In order to submit an application electronically, an Applicant must register on the Indian Customs IPR Recordation Portal www.ipr.icegate.gov.in. A unique id and a password will be generated and relevant documents must be submitted along with duly filled-in online forms. A Unique Temporary Registration Number is then generated, which along with a physical copy of the documents must be submitted to the IPR cell of the Custom House. Within 30 days a Unique Permanent Registration Number will be issued which serves as conclusive proof of recordation of the IP right.
- A copy of the registration certificate of the intellectual property right as proof of the existence of such right
- Power of Attorney in favour of the person who is filing the Application, if required
- Images of genuine goods (for trademarks, product patents, and designs)
- Images of infringing goods (if applicable/ available)
- Hard copies of the complete set of documents uploaded online to be submitted to the Customs Office of the opted location.
- A demand draft of INR 2000/- in favour of the Commissioner of Customs of the opted location.
- An Indemnity Bond: The right holder must execute an indemnity bond with the Commissioner of Customs indemnifying the Customs authorities against all liabilities and expenses on account of suspension of clearance of allegedly infringing goods.
- General Bond or Centralised Bond: The right holder or his authorised representative must execute a bond with the Commissioner of Customs to bear the costs towards destruction, demurrage and detention charges incurred for the destruction or disposal of infringing goods.
- Name and contact details of the Applicant
- The serial number and details of the demand draft in favour of the Commissioner of Customs.
- Details regarding the scope of the IP right which the right holder is intending to register
- Details regarding the differentiating features of genuine and infringing goods
- The IEC code of the right holder and other authorized importers
- In case of geographical indications – description of the GI, the area of production.
- Grounds for the notice of suspension of the release of the goods allegedly infringing intellectual property rights
- A detailed description of the goods with Customs Tariff Heading in respect of which an intellectual property right applies, together with a sample, model or photograph of a genuine product
- Product code of the goods been imported/exported
If any of the required information is not provided, the Deputy Commissioner of Customs or Assistant Commissioner of Customs may require the right holder to provide the same within 15 days, which may be extended for sufficient reasons. Within 30 working days from the date of receipt of the notice, the Commissioner shall notify the Applicant whether the notice has been registered or rejected along with validity period of the registration during which assistance by Customs shall be rendered. After the grant of the registration, the import of allegedly infringing goods into India shall be deemed as prohibited under Section 11 of the Customs Act, 1962.
In a notice for suspension, where clearance of the said infringing goods has been suspended and the right holder or his authorised representative does not join the proceedings within a period of ten working days from the date of suspension of clearance leading to a decision on the merits of the case, the goods shall be released. If the right holder or his authorised representative does not join the proceedings within a period of ten working days, the goods shall be released. This time-limit of ten working days may be extended by another ten working days in appropriate cases by the Commissioner or an officer authorized by him in this behalf. In the case of perishable goods suspected of infringing intellectual property rights, the period of suspension of release shall be three working days which may be extended by another four days. In case the right-holder or his authorized representative joins the proceedings, the Deputy Commissioner of Customs or Assistant Commissioner of Customs, as the case may be, having reasons to believe that the goods are infringing and liable to confiscation under section 111 (d) of the Customs Act, may seize the same under section 110 of the Customs Act.
The Commissioner or the officer duly authorized in this behalf shall allow a right holder and the importer or their duly authorized representatives to examine the said infringing goods. Whereupon determination by the Deputy Commissioner of Customs or Assistant Commissioner of Customs, as the case may be, it is found that the goods detained or seized have infringed intellectual property rights, and have been confiscated under section 111 (d) of the Customs Act, 1962 and no legal proceedings are pending in relation to such determination, the Deputy Commissioner of Customs or Assistant Commissioner of Customs, as the case may be, shall, destroy the goods or dispose them. The costs toward destruction, demurrage and detention charges incurred at the time of destruction or disposal shall be borne by the right holder. However, goods of a non-commercial nature contained in personal baggage or sent in small consignments intended for personal use of the importer are exempted from the application of the Customs Recordal rules.
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.