Understanding Recordal of Trade Marks with Customs
In Australia, a trade mark owner or authorised user can file a Notice of Objection with the Australian Border Force (ABF) that allows them to seize imported goods that infringe their trade marks at customs. Usually, this means the seized goods will be substantially identical or deceptively similar to a trade mark that has had a Recordal filed. Recordals can be filed for other categories of intellectual property such as copyright, protected Olympic expressions and those relating to major sporting events indicia and images. Notices of Objection are usually lodged by trade mark rights holders concerned about the potential risks to their trade, reputation and profits arising from infringement of their trade marks from imported goods.
Key Aspects of Recordal of Trade Marks with Customs
Legal Framework: The Trade Marks Act 1995 (Cth) enables owners of registered trade marks to file a Notice of Objection that references a current trade mark registration with the ABF. A Deed of Undertaking must be filed with the Notice of Objection where the trade mark owner gives a formal undertaking to agree to repay the costs resulting from any seizures made. A Notice of Objection for a trade mark is valid for four years but can be re-lodged at the end of a four year period if ongoing protection is required or withdrawn at any time if no longer required. Once a Notice expires it is no longer valid and a new Notice would need to be filed with the ABF.
Process for dealing with seized goods that may infringe a registered trade mark:
- A valid Notice of Objection filed with the ABF allows it to seize goods that are subject to customs control, appear to infringe a registered trade mark and are intended for commercial purposes;
- When infringing or potentially infringing goods are seized the importer and owner or their legal representative will be notified in writing;
- The date of the seizure notice will be the date of commencement of a claim period of 10 working days and the importer can make a claim for the release of the seized goods within this period;
- After a claim is made, the trade mark owner has 10 working days to either commence legal action or consent to the release of goods to the importer;
- If no legal action is taken, the goods will be released to the importer as long as all other legislative requirements are met;
- If a legal claim is commenced the goods will be held until the court orders that the goods will be released to the importer or forfeited to the Commonwealth;
- If the goods are forfeited they will be disposed of (usually destroyed).
International Recordals: It is also possible to record your trade marks with customs authorities in other countries. Depending on the country, customs authorities may be able to seize goods before they are exported to Australia or prevent goods being imported that infringe a recorded Australian trade mark. Some countries will investigate following a seizure of goods which may allow enforcement action by the trade mark owner, while others may proceed directly to forfeit and disposal. For example, if you lodge a Recordal with China’s customs authorities (renewable every ten years) it allows Chinese customs to seize shipments of infringing goods before they leave China’s borders.
Intellectual Property Considerations: Seizure of goods that may or do infringe a registered trade mark demonstrates a trade mark owner’s vigilance in monitoring and taking action in the face of any infringement or potential infringement of their registered intellectual property rights. Enforcing the rights that come with a trade mark registration through a Recordal with customs saves a lot of time for owners as the identification and enforcement are undertaken by customs for the country where a Recordal has been lodged. While it is possible to enforce a non-registered or common law trade mark in other ways, registration of trade marks provides additional protections in Australia including the ability to lodge a Recordal with the ABF.
Our Expertise in Recordals of Trade Marks with Customs: CGLaw can advise on the intricacies of Recordals of Trade Marks with Customs, assisting with preparing applications and connecting our clients to suitable international legal teams for assistance with Recordals in other territories. Our team of skilled lawyers and registered trade mark attorneys understand the importance of trade mark protections and can help clients navigate complex legal issues while protecting trade marks against infringement in Australia and around the world.
Whether you are a registered trade mark owner or authorised user, we provide tailored legal solutions to ensure that your trade marks are protected and can identify instances of potential trade mark infringement, and you have the option of defending or enforcing claims of trade mark infringement.
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If you require assistance with registration or protection of your trade marks including Recordals with customs in Australia or overseas, our team is here to help. Contact us today to schedule a consultation and learn how we can assist you in safeguarding your trade marks and other intellectual property rights.