By Omid Komeili, Lawyer
Counterfeit goods that enter the Australian market can be detrimental to your brand, sales revenue and reputation.
Lodging a Notice of Objection with the Australian Department of Immigration and Border Protection (Customs) can be an effective trade mark enforcement tool for registered trade mark owners concerned about counterfeit goods entering Australia.
What is the purpose of a Notice of Objection?
A Notice of Objection essentially informs Customs that the owner of a registered trade mark ‘objects’ to the unauthorised supply and importation into Australia of goods bearing its trade mark. If Customs inspections identify counterfeit goods that infringe a registered trade mark referred to in the Notice of Objection, it is required to seize those goods and prevent them from entering the Australian market.
Once counterfeit goods have entered the Australian market, it is difficult to cost-effectively enforce trade mark rights against the importers, distributors and retailers of those infringing goods.
Who can benefit from a Notice of objection?
Any company or person who is the registered owner or authorised user of an Australian registered trade mark (Trade Mark Holder) may lodge a Notice of Objection with Customs.
What’s the procedure?
1. Lodge a Notice of Objection
The Trade Mark Holder must lodge a Notice of Objection with Customs. The form can be found here.
2. Sign a Deed of Undertaking
The Trade Mark Holder must sign a Security under Section 133 – Deed of Undertaking, which is a legally enforceable undertaking of the Trade Mark Holder to pay Customs’ costs associated with seizing the counterfeit goods. The form can be found here.
3. Assisting Customs
Provide Customs with:
- a list of authorised importers of the goods, which will help identify infringing goods; and
- any information relating to suspected infringers or shipments of infringing goods due to arrive in Australia.
4. Process following seizure of counterfeit goods
- If Customs detects counterfeit goods, it will seize those goods.
- Customs will then send a Seizure Notice to the importer and the Trade Mark Holder.
- The importer has 10 business days to respond to the Seizure Notice by either lodging a Claim for Release or forfeiting the goods.
- If a Claim for Release is lodged by the Importer, the Trade Mark Holder must commence legal proceedings against the importer or negotiate with the importer to forfeit the goods within 10 business days of receiving the Claim for Release.
- If the importer does not lodge a Claim for Release in time, the goods will be forfeited to Customs and destroyed at the importer’s expense.
- If the Trade Mark Holder does not commence legal proceedings within the 10-day period, the goods will be released to the importer.
What should you do?
Capture and register intellectual property rights
- Conduct a trade mark audit of your business.
- Apply to register trade marks for your brand names.
- Consider lodging a Notice of Objection if counterfeit goods are a risk to your brand.
- Seek legal advice promptly if you are notified by Customs that counterfeit goods have been seized.
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