The Customs, The IP, The Dilemmas!

 

Can infringement action w.r.t. entire IP be taken at Customs office only? Answer is both Yes & No!

In case of Copyrights, S. 53 is restricted to the Importation of infringing copies of goods.             

In case of Trademarks, S. 29(6)(c) cites infringement, when import/export are involved.

Patents, as in the amendments of the IPR Enforcement Rules 2007/18: the Patent Act, and Patent as defined in Patent, were omitted in 2018 notification; Yet, mentioned in Section 11(2)(n) of the Customs Act (as per my knowledge and belief).

When the above read with S. 11, 11(2)(n), S.111, 113 of the Customs Act, that cite that prohibition of import and export.

Combine everything now, what’s written above:

The right holder (who owns, claims to be the rightful owner of the intellectual property rights) can register at the Customs portal (Indian Customs IPR Recordation Portal), execute certain bonds, viz. but not limited to Indemnity, General, Security, Centralized etc.; the format and details of which would be provided, as if you’re filling any Application form for the entrance examination. The application would be scrutinized, and, if been approved, then in case there would be any infringement, right holder would be notified, validity of such recordal would be for the period of five years or as and when the rights expire, the status of which needs to be updated time to time to the Customs Office.  

In case of the urgency, a petition can be filed with the Commissioner of Customs, or to any other officer authorized by him, in the FORM – XVI, as mentioned in the Copyright Rules 79, the template one can found online, and also the Annexure Form provide at the portal as mentioned at the Customs portal.  

The goods can be perishable or otherwise, so accordingly, the confiscated alleged infringing goods/products would be kept for a certain period of time, depending on the nature of it. Both the right holder and the importer / exporter would be notified if in case of the application, and if either of the party doesn’t appear, then the confiscated goods would be released, or, destroyed. But the right holder, as stated above, needs to deposit certain amount as security VIA bonds + application fees. And the indemnity bond would be to indemnify the customs officials.😊

© Pranav Chaturvedi