Procedure without assistance from customs authorities
Procedure with assistance from customs authorities
Perishable goods
Small shipments
Cost responsibility
Goods in transit
Active interim injunctions
Strengthening of rights holders' position
Importers must actively oppose destruction
Narrowing of exemption for private imports
Procedure without assistance from customs authorities
The customs authorities shall, on their own initiative, seek to uncover pirated goods and stop the import of these to Norway. When goods are discovered that are suspected of infringing IP rights, the customs authorities shall issue a notice to the rights holders (ie, the person who owns the rights that are assumed to have been infringed) and the recipient of the goods (ie, the importer) to indicate that the goods have been withheld under section 15-5 of the Customs Act. The notice gives the rights holders a short period of five working days to investigate whether the goods are in fact pirated (or otherwise infringe their IP rights) and obtain the importer's written consent to the destruction of the goods, or a court order on the further detention of the goods, while the regular courts decide on destruction and possible damages. If the rights holders does not act within the deadline, the goods will be released to the importer.
This deadline was previously twice as long (10 working days), but according to the new rules, the rights holders can buy significantly more time (and assistance) by submitting a so-called "application for assistance from the customs authorities" under section 15-1 of the Customs Act.
Procedure with assistance from customs authorities
Such an application for assistance from the customs authorities can be submitted both after receiving notification of detention (in that case, within four working days from the date of notification under section 15-5(4) of the Customs Act), or even before the import of pirated copies has been revealed. The application (which is submitted via an electronic form on the Altinn portal) must include information about the relevant rights (eg, to which trademarks the applicant has registered rights), as well as any information the applicant may have about the pirated copies (eg, in which country they are typically produced and sent from). If the applicant has no specific information, the application can be completed in a general way.
Following the submission of the application, the customs authorities make a decision on assistance under section 15-2 of the Customs Act. The decision is valid for one year at a time, and can easily be renewed within 30 days of expiry of the decision.
Where the customs authorities decide to provide assistance, a notice is issued to the rights holder and the importer as described above; however, there are some significant differences:
- The deadlines are extended, and can be further extended to a full 20 working days (section 15-7(1) and (2) of the Customs Act).
- It is no longer the rights holder's responsibility to obtain the importer's written consent to destroy the goods to prevent them from being released. As long as the rights holder confirms that the goods are pirated (or otherwise infringe their IP rights), it is up to the importer to actively oppose their destruction. If the importer does not present an opposition to their destruction within 10 working days from the date of notification, this is considered consent to destruction under section 15-7(1) of the Customs Act.
If the importer actively opposes destruction within the time limit, the rights holder will be notified of this. In order to avoid the goods being released to the importer, the rights holder must, within a new deadline of 10 working days, bring an ordinary infringement suit against the importer (under section 15-7(3) of the Customs Act). Once the action has been brought, the customs authorities shall continue to detain the goods until the question of infringement has been finally decided in the courts.
For perishable goods, the law's 10-day deadlines are generally replaced by deadlines of only three working days.
Section 15-8 of the new rules contains separate, simplified rules on so-called "small consignments". The rules apply if the customs authorities decide to provide assistance, and the rights holder has accepted the procedure for destruction of small consignments in the application form. In that case, the customs authorities may, on their own initiative, arrange for the destruction of small consignments without notifying the rights holders, provided that the importer does not actively oppose this.
"Small consignments" are defined under section 15-8-1 of the Customs Regulations as postal or courier consignments that contain five or fewer goods or have a gross weight that does not exceed three kilos.
In the application for assistance from the customs authorities, the applicant (ie, the rights holder) must declare themselves responsible for any costs incurred by the customs authorities in connection with the storage and possible destruction of withheld goods, which in any case follows from section 15-9 of the Customs Act. Any costs for storage and/or destruction can, however, be reimbursed by the importer as legal costs in an infringement case (or in a separate compensation case).
The cost responsibility was also borne by the rights holder according to the old system, and experience shows that the customs authorities almost never demand covered costs for the destruction of goods. In cases where larger consignments of goods must be stored over time (eg, pending a final judgment), however, significant storage costs may be incurred, for which the rights holder is liable.
Changes will soon be made to Norwegian trademark law which will mean that the customs authorities can also withhold pirated copies in transit – that is, goods that are only temporarily in Norway during shipping from and to another country.
The rules on withholding goods in transit will only apply in cases where the allegedly infringed trademark is protected in the country of destination of the goods.
The new rules will, for the time being, apply in parallel with the existing scheme with interim injunctions under section 24-7 of the Disputes Act. Rights holders with such injunctions will not, however, be able to avail themselves of the simplified procedures for small consignments described above. However, the changes imply that this injunction solution will be far less attractive and relevant for rights holders moving forward.
Strengthening of rights holders' position
The new rules entail a significant strengthening of the rights holder's position, provided that the rights holders uses the opportunity to apply for assistance from the customs authorities.
The benefits of submitting an application for assistance include the following:
- A good application for assistance from the customs authorities may contain information that improves the customs authorities' ability to detect and stop the import of illegal copies of goods.
- If/when counterfeit goods are discovered and withheld, the rights holder has more time to examine the goods and possibly seek legal assistance.
- If/when counterfeit goods are discovered and withheld, the customs authorities take care of the demanding dialogue with the importer in the first instance. The rights holder previously had to do this themselves (usually with expensive, professional assistance).
- If the importer opposes the destruction of the goods, it is sufficient to institute legal action to avoid the goods being released to the importer. Without a decision on assistance from the customs authorities, the rights holder would have to be granted an interim injunction for the customs authorities to be able to withhold the goods pending a legal clarification on the question of infringement.
- The rights holder can choose to use the simplified rules that apply to small consignments.
Applications and decisions for assistance from the customs authorities trigger no public fees, and there is thus little reason not to apply for assistance if it is suspected that copies of goods have been imported to Norway.
Importers must actively oppose destruction
The old system required that the rights holder obtain the importer's consent to the destruction of withheld goods. For the importer, it was thus an effective tactic to make themselves inaccessible, which led to the goods being released unless the rights holder took (potentially risky and costly) legal action.
With these changes, active action by the importer is required to avoid the destruction of withheld goods. This means that it is no longer useful to hide from the rights holder, and that importers must take all notifications seriously – after all, there may be good reason to disagree with the rights holder's assessment of the legality of the goods.
Narrowing of exemption for private imports
Private individuals' imports of goods for private use have traditionally fallen outside the Norwegian customs and IP law rules, as these have only affected imports in business activities. It has therefore been a legal opportunity to import small consignments of pirated goods for private use. This has meant that a number of business imports have been attempted to be disguised by dividing up larger orders that have been addressed to one or more private individuals.
With the new rules, however, it is specified that the concept of business must be interpreted in line with the European Court of Justice's judgment in the Rolex case (C-98/13). This means that it is sufficient for the sender to act for business purposes in order for the rules to be applicable. Private imports will thus be affected by the new rules if the sender is a business (eg, a foreign online store or wholesale retailer).
For further information on this topic please contact Mikkel Lassen Ellingsen at Bryn Aarflot by telephone (+47 46 90 30 00) or email ([email protected]). The Bryn Aarflot website can be accessed at baa.no.