Customs Notices are an under utilised tool available to registered trade mark owners. They are a simple and inexpensive means by which trade mark owners can make it clear they are:
- monitoring the marketplace, and
- serious about enforcing their trade mark rights.
The Australian Trade Marks Act 1995 (Cth) creates a ‘Notices of Objection’ system designed to assist trade mark owners to protect their registered Australian trade marks through what we commonly refer to as Customs Notices. Under this system, Australian Customs can, upon the request of the owner of a registered trade mark, intercept imported counterfeit goods before they reach the Australian market.
The system is designed to provide protection to any Australian trade mark registered in relation to goods, be it a trade mark for a designer handbag or for a refrigerator. Although the system has its shortcomings, it is a relatively uncomplicated and inexpensive means by which trade mark owners can seek to prevent the reputation of their registered trade marks from being tarnished by fakes. Currently, many of the Customs Notices in place belong to famous fashion and luxury goods houses.
The Customs Notice System
After the registration of a trade mark in Australia, the owner may obtain relief if the trade mark has been infringed. In order to enjoy the additional protection afforded by a Customs Notices through the ‘Notices of Objection’ system, it is also necessary to:
- notify Australian Customs of your registered trade mark by lodging a Notice of Objection (which is valid for four years, unless revoked by the trade mark owner in writing)
- undertake to repay Customs’ expenses of seizing (storing and potentially destroying) any counterfeit goods, and
- document the particulars of the registered trade mark.
Only trade marks registered in relation to goods (not services), can be notified to Customs.
Previously, it was necessary to provide a substantial bond to Customs for the Notice to be in place. However, this requirement has now been removed making the system more attractive to trade mark owners.
To be considered counterfeit, the imported goods must have applied to them, or in relation to them, a sign that is substantially identical with or deceptively similar to a registered trade mark and must be goods in respect of which the trade mark is registered. Where a Customs Notice is in place, Customs will seize counterfeit goods if they hold a reasonable belief that a registered trade mark is infringed by the importation of these goods. The inferior quality of the goods seized, errors in spelling or deliberately misspelled trade marks can form the basis of a reasonable belief that goods are counterfeit.
When Customs seizes what it considers to be counterfeit goods, Customs contacts both the owner of the counterfeit goods and the owner of the registered trade mark.
What happens next?
After being notified of Customs’ seizure of the counterfeit goods, the owner of the counterfeit goods may at any time, before proceedings for trade mark infringement are started, consent to the goods being forfeited and disposed of.
If the owner of the counterfeit goods does not consent to the forfeiture, the trade mark owner must bring court proceedings for trade mark infringement. Otherwise, Customs releases the counterfeit goods to their owner.
Court proceedings for trade mark infringement must be brought in the Federal Court of Australia within 10 working days of being notified of the counterfeit goods (or within 20 working days, if an extension is applied for and granted by the Customs). In such court proceedings, the trade mark owner must also seek a court order restraining Customs from releasing the goods. If, after 20 working days from the day on which court proceedings were started, there is not a court order in force preventing the goods from being released, Customs must release the goods to their owner.
Trade mark infringement cases involving counterfeit goods routinely involve counterfeit goods with marks that are either identical or substantially identical to the registered trade mark. The result is often the court finding that the registered trade mark has been infringed. In many cases, the owner of the counterfeit goods is unrepresented or does not take part in the proceedings.
When a court finds that the counterfeit goods infringe a registered trade mark, the court can make the usual types of orders made in any trade mark infringement case. This includes:
- injunctions restraining the owner of the counterfeit goods from manufacturing, importing, selling or offering for sale, advertising or promoting counterfeit goods bearing the registered trade mark or any mark which is substantially identical with or deceptively similar to the registered trade mark
- declarations of trade mark infringement
- forfeiture of the counterfeit goods to Customs and their destruction, and
- damages or account of profits.
The Customs Notice system is simple and inexpensive and yet can be a powerful means by which trade mark owners can send the message that they are serious about enforcing their trade mark rights. Once in place, they provide trade mark owners with advance notice from Customs of any attempts to import counterfeit goods before those goods become dispersed in the marketplace.