Compiled by: Sachi Kapoor | Concept & Edited by: Dr. Mohan Dewan

We have multiple acts to protect Intellectual Property within the territory of the country. In addition, the Customs Act, 1962 u/S.11(2)(n) empowers the Government to prohibit import or export of goods if the protection of trademarks, patents and copyrights is concerned. The Customs Act also provides for confiscation of goods wrongfully imported/exported u/S.111 and S.113 respectively.

On May 8, 2007, the Government issued a notification (notification no. 47/2007) giving out the Intellectual Property Rights Enforcement Rules, 2007 which elaborated on the definitions of 'Intellectual Property" u/R.2(b) and "Intellectual Property Law" u/R.2(c). Further, the Rules established the process for giving a Notice, registration of such notice, which shall request for the suspension of suspected infringing goods. The Rules also dealt with the conditions of registration, prohibition on imports of infringing goods, examination of goods by the IPR holder, supply of information to the right holder/importer, protection of the customs officers, are the gist of the available rules.

It is interesting to note that the IPR Rules has had interesting encounters with the court. The episodes began back in 2009, when Samsung filed a writ petition against the customs officer for barring the import of dual sim handsets into the country under the IPR Rules, 2007. The issue arising was, that Customs officers had the right to determine the patent legality of imports merely based on complaints registered by a patent owner without the consulting the importer of the goods.

Later, in 2012, Mr. Patel (Bharat Bhogilal Patel) filed a complaint against LG Electronics and multiple other importers for infringement. A circular was released by the govt. in 2009, which helped in the implementation of the IPR Rules, 2007. This circular addressed the issue of a Customs Officer not having the pre-requisite knowledge on Patents, Geographical Indication Infringements and design compared to Trademark and Copyrights. In order to deal with the infringements of the former kind, they should have been pronounced as offences by the court of law making the application by the Customs Officer simpler.

In order to deal with this, vide notification no. 56/2018, the Central Government introduced amendments to the IPR Enforcement Rules, 2007 and introduced the Intellectual Property Rights (Imported Goods) Amendment Rules, 2018. Now vide this notification, the Central Government has omitted the following:

  • words 'patent as defined in the Patents Act, 1970' in R.2(b) which defines the term 'Intellectual Property".
  • 'The patents act, 1970' in R.2(c) which defines the term "Intellectual Property Law".

Thus, it can be concluded that the reason of the amendment has stemmed from the above cited cases thus relieving the Customs Officer from the pressure of identifying infringing goods.

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.