Authors: Kristina Vilkiene, Assistant Attorney-at-Law in METIDA, Erikas Saukalas, an Associate Partner, Head of International Relations Division in METIDA
Counterfeiting and falsification of goods and piracy are a kind of business by which the persons operating with are illegally using exclusive rights of the owner of reputed Trademark, Design or Copyright to the IP object he owns. In case of counterfeiting or piracy, not only economic interests of the holder of exclusive rights are infringed, but also moral damage and illegal usage of notoriety and reputation of IP object are damaged. Furthermore, consumers also suffer from such activities. The goods counterfeited are mostly pharmaceutical preparations, toys, perfumery, therefore, use of such goods causes direct risk to health and security of consumers. Continual market surveillance is the most reliable measure for the protection of both economic and moral interests. Fighting against counterfeiting and piracy might cover both surveillance of the internal market and suspension of counterfeited and pirated goods on the boarder by customs. Protection of exclusive rights at the boarder shall start from filing of the request to the relevant customs authority. The requests can be filed in the countries the rights of IP owner are valid. Below, you will find brief information about the requirements and procedure in some of them.
Only IP objects the legal protection of which is extended to Ukraine may be included in the Customs Register. The bond is provided by the right owner for timely compensation of expenses borne by the customs in relation with suspension of goods alleged infringing IP rights. According to the Customs Code, all expenses related to suspension of goods and their destruction including storage of the goods at the customs warehouse or removal of trademarks from the goods must be borne by the right owner. The application granted is valid for six months or a year and can be further renewed for the same period. There is no official fee provided for the filing and granting of the application.
The goods alleged infringing IP rights might be suspended for the term of 10 working days with possible extension of the said term for further 10 working days. After examination of the goods (or their images) right owner takes a decision regarding further way of protection of IP rights, namely applying to the court or pre-trial settlement of the dispute. Simplified procedure is also available for the destruction of the goods.
Russian Customs Code also provides that only trademarks that enjoy legal protection in Russia might be recorded in the Russian Customs Trademark Register (pending trademarks cannot be a part of the customs recordal). Several trademarks might be covered by the same application. Maximum term of validity of the application is 2 years with the possibility of renewal for every further year. Undertaking to reimburse damages provided by the trademark owner is necessary in order to have the application granted and a document confirming that the undertaking is secured (a monetary deposit, etc.) or insurance agreement should be attached.
Once the customs is granted, the Customs will check every part of the goods with the particular trademark. In case the importer is not included into the list of authorized importers and fails to prove that he/she is the authorized importer or\and that the goods are genuine, the Customs might suspend the shipment for 10 days (the term can be prolonged for 10 more days). The owner of IP rights will be given the possibility to investigate the goods (images) and decide on further possible actions.
Application might be filed at State Customs Committee. There is no official fee provided for the filing of the application. Maximum term of validity of the application is 2 years but not more than the term of the trademark validity. The goods alleged to be infringing the IP rights might be suspended for the period of 10 working days and owner of IP rights shall decide whether to start any further procedures for destruction of the goods.
Application for the protection of IP rights might be filed without any official fee, however, payment of insurance fee is required. The same period of 10 working days would be applied for suspension of the goods alleged infringing IP rights. Civil judicial proceedings shall be started in case of infringement of IP rights. The term of validity of the application is not more than 2 years and this period may be extended for the unlimited subsequent periods of 2 years. The term of protection of rights may not exceed the term of the rights of a trademark.
Application is also required in order to have the IP rights protected in China. Official fee is provided for the filing of the application and depends on the number of the trademarks included. Upon granting of the application the customs will check the imported and exported goods into and out of China. If the Customs discover goods which they suspect to be infringing a recorded trademark registration, the owner of IP rights will be informed and will be given three working days to inform the customs whether the goods are counterfeits and to request the customs to either detain or release the goods. This term is not extendable. If the goods are confirmed to be counterfeits, the owner of IP rights might request the customs to detain the goods upon payment of a bond, depending on the declared value of the goods. After payment of bond, the customs will detain the goods and start investigation on the consignee. The maximum term of protection of a Customs recordal is ten years, however, it depends on the validity term of the trademark registration.
General information important for customs:
Filing of the Customs application informs the customs about exclusive rights to be protected. In addition, any relevant information which might be helpful and informative for customs, might also be filed:
- images and details about the original goods;
- details of the authorized suppliers;
- destination and routes of shipping of original goods, etc.
Should you be interested in getting your exclusive rights protected by Customs Application and would need more information about procedure, documentation required and the cost involved, please feel free to contact us.