INTRODUCTION
The advent of rapid globalization and technological developments led to an increase in the number of suppliers, and identical services creating a likelihood of confusion in the minds of consumers by bringing fake, illegal, and counterfeit goods to the market. Â To combat this, India has initiated laws to scrutinize the cross-border movement of products and to stop counterfeit goods outside the country’s borders.
INITIATIVES OF THE INDIAN GOVERNMENT TO PROTECT IP RIGHTS HOLDERS FROM COUNTERFEITING GOODS.
As the World Intellectual Property Organization (WIPO) has specifically mandated that trademarks and copyrights be protected under Articles 51 to 60 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement), the following initiatives are taken to protect the rights of the Trademark Holder:
The customs recordal system is a legally approved process of protecting the intellectual property rights holders to register their goods with the customs authority to help prevent the entry of counterfeit goods into the country.
National Customs and Border Protection organizations work to prevent the importation of counterfeit low-quality products into India and to safeguard the IPR rights of the brand owners, the Indian Customs introduced Intellectual Property Rights (Imported Goods) Enforcement Rules 2007 with the TRIPS and World Customs Organisation Model which is a comprehensive and robust system allowing the right holders to register their IPR with the customs authorities and request to forestall the cross-border movement or export of goods that infringe on trademarks, patents, or copyrights from counterfeiting goods under section 11 of Customs Act, 1962.
The Department of Revenue’s Central Board of Excise and Customs (CBEC) protects the Intellectual property rights of counterfeited goods by establishing an IPR module in India. This module makes it easier to file IPR notifications while adhering to the IPR (Imported Goods) Enforcement Rules 2007 (the IPR Enforcement Rules).
CUSTOMS RECORDAL IN INDIA:
The customs record the intellectual property right (IPR) of the right holder. The right holder shall apply either through writing or registering on the Indian Customs IPR Recordation Portal (www.ipr.icegate.gov.in) along with the necessary documents.
- A unique ID and password will be generated and relevant documents can be submitted along with duly filled-in forms.
- Next, A unique Temporary Registration Number is generated, and the right holder shall submit a physical copy of the documents to the IPR cell of the Custom House.
- Within 30 days a unique permanent registration number will be issued.
The Trademark holder can hold the customs record for 5 years or until the expiry of the relevant intellectual property rights on his goods and services, along with executing an indemnity bond indemnifying the customs authorities against all liabilities and costs incurred during the suspension of alleged infringed goods.
INDIAN CUSTOMS IPR RECORDATION PORTAL:
The portal records rights holders’ goods including trademarks, patents, designs, copyrights, and geographical indicators. The portal facilitates the Right holders to pass information about the specific infringement of his/her product to customs officers. And uploads photographs of the protected and infringed goods
CUSTOM RECORDAL PROCEDURE:
The first process begins with the right holder of IP giving a written notice to the commissioner of customs seeking suspension of clearance of goods that the right holder suspects are counterfeit/infringing. The Customs officer shall inform the right holder about the application status and if the application is registered the customs authorities will continue to suspend the suspected counterfeit/infringing goods and will notify both the right holder and the importer about the suspension of the clearance of the goods in concern.
A general right is been conferred on the right holder and the importer to request information on the name and address of the other party. Once the suspected goods have been examined by the right holder and are found to infringe the right holder’s intellectual property rights, the Customs Department destroys or disposes of the goods under the right holder’s consent and under official supervision. As stated above, any costs incurred towards the destruction/disposal of infringed goods are borne by the right holder.
This rule may sound strange, where there is no renewal provision exists in case of renewal of the recordation. The only option that remains is that the application can be refiled for recordal of customs upon payment of INR. 2,000 to file a fresh application for the recordal of customs.
DOCUMENTS REQUIRED FOR RE-FILING/RENEWAL OF CUSTOMS RECORDAL
- Registration Certificates in respect of the IP right recordal that are required to be renewed.
- The indemnity bond and general bond executed between right holder and the Custom authorities at the time of filing the recordal.
CONCLUSION
The lack of a renewal option mandates strict scrutiny of the authenticity of the application and every detail provided. An extra effort is granted by the right holder in providing proof of the existence of the right by way of a registration certificate or a certified copy.
Contrastingly, a renewal option would facilitate easy protection of one’s intellectual property rights and the lack of a renewal option would adversely affect the rights and business of the importer resulting in the seizer of goods on mere suspicion of infringement. The lack of renewable options undermines the purpose of such protection of Intellectual Property Rights Holders. Many rights holders say that even the minimal time frame that remains between the expiry of an application for customs recordal and re-filing a new application, there would be another applicant filing for the same could cause irreversible loss to the holder and he/she would not have had the chance of preventing a new entry at the earliest.
Written by Nithila Kovai, Legal Intern at Intepat IP
