Many countries implement border enforcement measures in accordance with their obligations under the WTO agreements. These measures allow trademark and copyright owners and patent holders to request the temporary detention of goods suspected of infringing their intellectual property rights when they are under the control of customs authorities.
However, in general, border enforcement measures are not applicable to goods imported for personal use or within a household. The precise determination of what qualifies as “goods imported for personal use or within a household” can vary between countries, even within the same country, depending on the nature of the goods.
In some countries, rights holders may request customs authorities’ assistance by submitting a notice, usually subject to prescribed fees, for their registered trademarks and copyright-protected goods. Once a notice is filed, customs authorities can seize counterfeit or infringing goods bearing trademarks or copyright. In most countries, rights holders must submit a request, providing all relevant details about the goods whenever they have reason to believe that counterfeit or infringing goods are being imported.
Customs authorities may detain goods and notify the rights holder within a working period of 10 days. The notice is effective for a specified period and can be extended or renewed until the expiration of the trademark or copyright protection. During this period, the importer may file a complaint with the court if they believe the goods do not infringe trademarks or copyrights or do not fall within the scope of the notice.
In some countries, if customs authorities find that suspected infringing goods have been imported, and a notice is no longer appropriate, they may inform the rights holder (if known) about the importation and suggest that they send a notice to customs authorities within a prescribed period.
Of course, rights holders must file a compensation claim to cover any expenses that may arise from customs authorities’ actions, such as warehousing, transportation, and legal fees, while carrying out the notice.
When detained goods are seized, customs authorities notify the rights holder to determine whether the goods are counterfeit or infringe copyrights. In the United States, this determination is typically made by customs authorities themselves. During the seizure process, rights holders must decide whether to pursue a case to prove that the goods infringe their rights, although in some cases, a reasonable extension of the 10-day period may be granted through a filed application. If the rights holder does not initiate litigation within the 10-day period, customs authorities are required to release the importer’s goods.
Because intellectual property protection is a complex issue, it is advisable to seek legal advice from a patent attorney, etc., before filing a notice.
Regarding border enforcement measures, most countries comply with the provisions of the TRIPS/WTO Agreement.
