IP STRATEGIES FOR AUSTRALIA
Introduction
Infringing and imitation (counterfeit) goods diminish the value of legitimate goods of a trade mark owner or authorised user of a trade mark. The effects of infringing and counterfeit goods in the marketplace can be disastrous to a trade mark owner or authorised user and has the potential of reducing profits and destroying the reputation associated with the trade mark with respect to the quality or standard of legitimate goods.
Trade mark owners and authorised users of Trade Marks who already have Australian registered trade mark rights should register their Trade Marks with the Australian Customs Service (“ACS”) to protect their trade mark rights at the Australian border. Recent legislative changes have helped simplify the process for registered trade mark owners. The border control provisions provided under the Australian Trade Marks Act 1995 (Cth) (“the Act”) allows trade mark rights owners to inform the ACS of their rights to a trade mark so that suspected infringing or counterfeit goods may be seized by ACS on entry into Australia. Seizing infringing and counterfeit goods at the border is one of the most effective strategies of combating illegal pirated goods before they enter the Australian marketplace.
The First Step: Registration Of The Trade Mark in Australia
In order to rely on the border protection provisions provided for under the Act, the person must already own a registered trade mark for the relevant goods provided under the trade mark.
Notifying ACS Of The Trade Mark Registration
It is a relatively straightforward procedure to notify ACS of the ownership rights for an Australian registered trade mark.
It is possible to cover Trade Marks that the trade mark owner has registered as well as Trade Marks that they are authorised to use in Australia.
As well as registered Trade Marks, the ACS may be notified of rights to copyright in certain works. This may include product brochures, manuals, workbooks etc that may be provided with the goods for which copyright is recognised.
Both notices relating to Trade Marks and copyright will remain current on the ACS “watch list” for four years. It is also possible to extend the period for a further four year period.
Seizure Of Goods By ACS
When the relevant notices are put in place with the ACS, the ACS may seize suspected shipments of goods containing infringing or counterfeit merchandise that has been imported into Australia.
When a shipment is seized by ACS, the importer of the goods must make a claim for the return of the goods and will be required to provide correct contact details. These contact details will be provided to us as the main contact on behalf of the registered trade mark or copyright owner to allow us to make enquiries or institute proceedings for infringement, if necessary.
During this time, it will be possible to arrange for the inspection of the goods. It may also be possible to obtain a sample of the seized goods for evidence purposes.
If the importer fails to make a claim for the return of the goods, the goods will be forfeited to the Commonwealth and may be destroyed.
Trade mark and copyright rights owners must agree to meet the expenses of the ACS associated with storage and destruction of seized goods. Typically, expenses will only be charged for unusually large seized shipments or goods which require unusual destruction methods.
Enforcement Of Rights
Rights holders are able to enforce their rights in a number of ways. These include:
- Sue for trade mark infringement in the Federal Circuit Court (formerly known as the Federal Magistrates Court of Australia).
- Seek additional damages for flagrant infringement (including Copyright)
- Appeal opposition decisions to the Federal Circuit Court which will also reduce the costs of appeal.
The aforementioned enforcement provisions are a significant improvement compared with the previous enforcement provisions of the earlier legislation. The current provisions aim to simplify the procedures and provide rights holders with more information about the importer and the seized goods enabling them to promptly decide whether to pursue the matter further with respect to infringement.
Furthermore, the current provisions have increased penalty provisions with respect to a finding of trade mark infringement which bring the penalty provisions in line with those of copyright.
Action
Notifying the ACS of trade mark registration rights and/or rights to copyright is an extremely effective way of combating infringing or counterfeit goods in the marketplace. This is particularly so when pirated goods are known to be imported into Australia.
to ensure that your trade mark and copyright rights are protected at the Australian border.
