Trade and international movement of goods not only form the backbone of any economy, but forms an integral part of the broader socio-political landscape. Intellectual Propriety Rights holders are under constant threat of counterfeit products in the market, which is increasing exponentially with growing technology and increase in cross-border commerce between countries. Interestingly, such counterfeit goods may not always be manufactured and circulated for trade and commerce in the domestic market but may also enter illegally through the customs frontiers of a country. Therefore, it is crucial for IP Rights holders to keep a close watch and take appropriate and timely action against imports that can potentially be infringing on the rights of such IP Rights holders.
The Customs IPR (Export-Import) Rule, 2019
Recently, to honour Bangladesh's international commitments under the TRIPS (Trade Related Aspects of Intellectual Property Rights) Agreement, and to counter the ever present and ever-growing issue of import-export of counterfeits and fake goods strengthened its Border Protection Measures and the Government People's Republic of Bangladesh embraced this growing bandwagon of countries actively battling against the issue of cross-border counterfeits by enacting a special set of laws/rules to counter this problem. In this regard, the National Board of Revenue (NBR) of Bangladesh recently issued the Intellectual Property Rights Enforcement (import and export) Rules-2019 in November 2019.
The new Border Protection measures allow for Intellectual Property Rights Holders to object to the import-export of suspected infringing products by filing a prescribed form with the Commissioner of Customs. Under the rules, "Intellectual Property" includes:
- Trademark defined under the Trade Marks Act, 2009
- Copyright defined under the Copyright Act, 2000
- Patent defined under the Patent and Designs Act, 1911
- Geographical Indication defined under the Geographical Indication Act, 2013
As regards the above IP, a Right Holder is deemed as any person who owns any of the above Intellectual Property or his licensee or any authorised representative. Any Rights Holder may take action under the rules with respect to any "infringing" product that has been manufactured, reproduced, published or used upon infringing the intellectual property law/s prevailing in Bangladesh or in any other jurisdiction and without the license/authorization obtained from the right holder or its authorized person/entity.
Key Provisions under Customs IPR (Export-Import) Rule, 2019
Upon any information about any suspected case of counterfeiting or infringement via import-export, a right holder may file a notice in the prescribed form to the relevant Commissioner of Customs, inter alia requesting them to withhold the said consignment. The form must contain certain mandatory information, including but not limited to the correct name and contact details of the Rights Holder or its representative, documents such as certificates evidencing registration of intellectual property (such as trade mark registration certificates) as well as documents evidencing their validity (such as renewal certificates or certified copies of the IP register in question), details about the grounds on which the consignment may be stopped, description of the original goods of the client in question, details of the relevant port/customs house, etc. Further, the application has to be accompanied with payment of the requisite fee (BDT 5,000) as well as the corresponding receipt.
The said documents have to be submitted with the application and in case of non-submission at the time of filing, the Commissioner of Customs may call upon the Applicant / Rights-Holder to furnish the necessary documents within 15 days.
Post-filing the application, the Commissioner of Customs has to inform the Applicant/ Rights-Holder about their decision (registration or refusal) within a time of 30 days. Post registration, a bond will also have to be submitted, the terms of which may be intimated by the Commissioner of Customs.
The registration shall be valid for a period of one (1) year.
SCOPE OF PROTECTION
Upon registration, the Commissioner of Customs shall inform other posts/customs houses about the said registration.
CONFISCATION OF SUSPECTED CONSIGNMENT BY CUSTOMS
Any designated officer may either at his own discretion or upon an application by a Rights-Holder, withhold clearance of product (either import or export), which is suspected to be infringing.
Upon such action, the Customs Office shall contact the Rights-Holder and grant them a period of 10 days to submit relevant documents to prove that they have the requisite IP rights with respect to the consignment. However for perishable goods, a period of only 3 days may be granted.
If the Rights-Holder is able to satisfy the requirements regarding IP, the Commissioner of Customs may then hold the said consignment/products under Section 17 of Customs Act and resolve the matter as per Rule 9 of the new rules. If the said requirements are not met, then the Commissioner of Customs may release the consignment/products within 24 hours.
FAILURE TO SUBMIT DOCUMENTS
In case of failure to respond within the stipulated time on part of the Rights-Holder, the Customs Office may thereafter take a decision as per the relevant provisions of law.
INSPECTION OF GOODS
Post receipt of approval from the Customs Office/ers, the Rights-Holder or its authorised representatives may then examine the impugned consignment/products or obtain a sample of the same for the purpose. The Rights-Holder shall be obliged to keep the information confidential.
In such cases, the Importer or Exporter shall also be granted opportunity to seek information regarding the consignment. Upon application from the importer-exporter, the Customs Office/ers may provide the information as furnished by the Rights-Holder. However, information pertaining to "trade secrets" may not be shared.
DISPOSAL OF INFRINGING GOODS
The Commissioner of Customs may order the destruction of the impugned products by following the due process, and may also hold the importer-exporter liable to bear the expenses for such destructions.
Furthermore, the Customs Office may not send back the infringing products to its source.
The introductions of these Border protection measures by Bangladesh is a significant step forward towards combating infringement/counterfeiting in the region, by stopping them at the very borders. This will also empower domestic as well as foreign Rights-Holders to better police their IP rights in the jurisdiction. As the rules have very recently come into place, Rights-Holders worldwide will be observing how the actual enactment of the same unfolds over the next few months.
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.