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Custom(s)-eyes your brand

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In one of our earlier newsletter articles, we reported on the nature of losses being incurred by intellectual property owners through the sales of counterfeit goods.  In the textile, clothing and footwear industry market alone, losses of up to $300 million per annum have been reported.  Counterfeit and piracy activities are increasing, and potentially putting your brand at risk.

Import provisions under the Copyright Act 1968 (Cth) and the Trade Marks Act 1995 (Cth) allow Australian Customs and Border Protection Service (Customs) to seize goods suspected of infringing a party’s copyright works or registered trade marks.  Under the Notice of Objection Scheme, the owner of a copyright work, and the owner or authorised user of a registered trade mark, (Objector) lodges a ‘Notice of Objection’ with Customs.  Although there are no official fees associated with filing a Notice of Objection, the Objector must also complete a Deed of Undertaking agreeing to pay any costs incurred by Customs when enforcing the notice (such as storage and destruction costs), and there are some exposures in agreeing to such an undertaking.

Once a Notice of Objection is in place, Customs has authority to seize goods (including counterfeit goods) it considers to infringe the registered trade mark or copyright work of the Objector.  The Objector has strict timelines to follow once notified by Customs of the seized goods, and it is imperative to act swiftly to successfully reduce the likelihood of the seized goods being released into the Australian market.

CHANEL® filed an appropriate Notice of Objection and Customs was on the ‘look out’ to intercept any imported counterfeit goods incorporating CHANEL® registered trade marks.  In 2008, CHANEL® was notified of the seizure by Customs of 92 pairs of sunglasses bearing one or more of the CHANEL® registered trade marks – Customs was keeping an ‘eye out’ for the CHANEL® brand!  CHANEL® successfully brought legal proceedings against the importer restraining him from using the registered trade marks of CHANEL®, and the seized counterfeit goods were ordered to be destroyed.

However, luxury brands are not the only target of intellectual property infringers.  Customs have informed us that there is an increasing volume of branded consumer products – such as foods and bandaids – being seized under the Notice of Objection Scheme and/or corresponding international programs.  If your brand is developing a reputation as a quality product, it may now be at risk.

If you own a copyright work or a registered trade mark the Notice of Objection Scheme can provide you with a potentially cost effective mechanism to utilise the services offered by Customs to prevent and/or restrict the entry of counterfeit goods into the Australian market.  If you need assistance registering your trade mark, protecting your copyright works or have any concerns about counterfeit goods infringing your rights, you should contact our Intellectual Property Team.

Author:  Noelene Treloar