Enforcement Of Intellectual Property Rights Through Customs - Patent

Article by Vijay Pal Dalmia, Advocate, Supreme Court of India and Delhi High Court, Partner & Head of Intellectual Property Laws Division, Vaish Associates Advocates, India

Custom Act, 1962 & Intellectual Property Rights Enforcement Rules, 2007

Apart from the various remedies provided under the IP Laws in India, one of the most efficient ways to protect and enforce intellectual property rights is through Custom Act, 1962
It prohibits import of goods that infringe Intellectual Property at the Custom Borders thereby restricting the entry of the goods infringing Intellectual Property Rights

Powers conferred by Customs Act, 1962

Under Section 156 (1) read with Section 11 (2) (n) and (u) of the Customs Act, 1962, the Central Government has made the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 applicable to imported goods.
The Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 has been amended vide notification no. 56/2018. -Customs (N.T.) dated 22nd June 2018 and the said rules have been called the Intellectual Property Rights (Imported Goods) Enforcement Amendment Rules, 2018.

Intellectual Property Rights (Imported Goods) Enforcement Amendment Rules, 2018

Vide the said Amendment Rules, the Central Government has amended Rule 2 and Rule 5 of the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007.
As per the Amendment, in Rule 2 in clause (b), the words and figures" patent as defined in the Patents Act, 1970" has been omitted and in clause (c), the words and figures" the Patents Act, 1970" shall be omitted.
In Rule 5, after condition (b), two more conditions have been inserted.
The Intellectual Property Rights (Imported Goods) Enforcement Amendment Rules, 2018 can be accessed from the following link: https://patentsrewind.files.wordpress.com/2018/07/custom-notification.pdf

What is Protected under the IPR Enforcement Rules 2007 after the 2018 amendment ?

After the amendment of 2018, the IPR Enforcement Rules 2007 permits a Right Holder to protect the following different types of Intellectual property-

WHO IS PROTECTED?

The Right Holder is protected under IPR (Imported Goods) Enforcement Rules, 2007. As per Rule 2(d) of the Rules, Right Holder means:

What is Protected ?

Under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, goods infringing intellectual property rights which are made, reproduced, put into circulation or otherwise used in breach of the intellectual property laws in India or outside India and without the consent of the right holder or a person duly authorized to do so by the right holder.

Procedure for Registration with Custom Authorities –Rule 3

Procedure for Registration with Custom Authorities –Rule 4

Notice to be Registered by the Custom Authorities on satisfaction

Within 30 working days from the date of receipt of the notice under Rule 3 (1) or from the extended period as per Rule 3 (4), the Commissioner shall notify the applicant whether notice is registered or rejected.
Minimum validity of registration of notice for a period of 1 year

Registration conditions –Rule 5

Right Holder also required to execute a bond with Commissioner of Customs undertaking to protect the importer etc. and competent authorities against all liabilities & to bear costs towards destruction, demurrage and detention charges till destruction or disposal
Right Holder shall execute an indemnity bond with Commissioner of Customs indemnifying Customs Authorities against all liabilities & expenses on account of suspension of release of goods.
Right Holder shall inform about any change in IPR subsequent to its registration with Customs within 1 month and Commissioner may accordingly amend/suspend/cancel the notice.

Benefits of Registration of Notice & Suspension Procedure -Rules 6 to 8

Prohibition and suspension of import of infringing goods under Section 11 of the Customs Act, 1962.
At all the Ports (Custom Borders) in India
Notice can be given by the Right Holder of the suspected infringing goods
Commissioner of Customs can suo moto suspend the clearance of such infringing goods
Rule 7(4): Where the Deputy Commissioner of Customs or Assistant Commissioner of Customs, as the case may be, has suspended clearance of goods on his own initiative and right holder does not give notice under rule 3 of the Rules or does not fulfill the obligation under Rule 5, within five days from the date of suspension of clearance, the goods shall be released provided that all other conditions of import of such goods under the Customs Act, 1962, have been complied with.

Information to Importer & Right Holder

Procedure for suspension of clearance of imported goods is provided under Rule 7 of the IPR Enforcement Rules, 2007. Where the clearance of goods has been suspended by Customs on its own, they may seek from Right Holder any information/assistance for determining whether goods are counterfeit or infringing or pirated.
Rule 7(2): The Deputy Commissioner of Customs or Assistant Commissioner of Customs, as the case may be, shall immediately inform the importer and the right holder or their respective authorised representatives through a letter issued by speed post or through electronic mode of the suspension of clearance of the goods and shall state the reasons for such suspension.
Rule 7(3): Where clearance of the goods suspected to be infringing intellectual property 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 provided that all other conditions of import of such goods under the Customs Act, 1962, have been complied with.

Supply of information to Right Holder & Importer –Rule 9

At the request of the right holder, the Deputy Commissioner of Customs or Assistant Commissioner of Customs, as the case may be, shall inform the name and address of the importer and without prejudice to the protection of confidential information the Deputy Commissioner of Customs or Assistant Commissioner of Customs , as the case may be, may also provide additional relevant information relating to the consignment which has been suspended from clearance.

Supply of information to Right Holder & Importer –Rule 10

At the request of the importer or his duly authorized representative, Deputy Commissioner of Customs or Assistant Commissioner of Customs , as the case may be, shall inform the name and address of the right holder and without prejudice to the protection of confidential information the Deputy Commissioner of Customs or Assistant Commissioner of Customs , as the case may be, may also provide additional relevant information relating to the consignment which has been suspended from clearance.

Procedure followed by the Custom Authorities on Suspension

IMPORTANT LINKS

Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007: https://upload.indiacode.nic.in/showfile?actid=AC_CEN_2_2_00042_196252_1534829466423&type=rule&filename=intellectual_property_rights.pdf

Intellectual Property Rights (Imported Goods) Enforcement Amendment Rules, 2018: https://patentsrewind.files.wordpress.com/2018/07/custom-notification.pdf

The Customs Act, 1962: https://www.indiacode.nic.in/bitstream/123456789/15359/1/the_customs_act%2C_1962.pdf

DOWNLOAD PRESENTATION

The content of this article is intended to provide a general guide to the subject matter. Specialist professional advice should be sought about your specific circumstances. The views expressed in this article are solely of the authors of this article.

India: Enforcement Of Intellectual Property Rights Through Customs