Through an SRO 170 (1)/2017, the FBR has amended Customs Rules, 2001 here on Wednesday. According to the SRO 170 (1)/2017, the new rules shall apply to imported goods only and shall not apply to parallel or grey market imports and de minimus imports. Application by the right holder for enforcement action: A right holder who has valid grounds for suspicion that imported goods are infringing his intellectual property rights protected under the Copyright Ordinance, 1962 and the Trade Marks Ordinance, 200, may, at the time of arrival of suspected goods at the notified customs station, make an application on the format set out in Annexure-A to these rules, to the Director, IPR (Enforcement) having jurisdiction, requesting for initiating enforcement action against such goods.
For goods infringing the provisions of the Patents Ordinance, 2000, Registered Designs Ordinance, 2000 and the registered layout-designs of Integrated Circuits Ordinance, 2000, the right holder or the Collector of Customs, as the case may be, shall follow the same course of action as prescribed under these laws.
The applicant, along with the application shall submit all prescribed documents as well as a notarised undertaking on the formal as set out in Annexure-B to these rules, indemnifying the customs authorities against all liabilities. The applicant, at the time of filing an application, shall also submit a bank guarantee on the format as set out in Annexure-C, from a scheduled bank for an amount of Pak rupees five hundred thousand or twenty-five per cent of the value of suspected infringing goods, whichever is higher, to cover possible compensation for the losses suffered by the owner of goods due to false application, and payment of expenses on account of investigation, warehousing, maintenance, disposal of goods, etc incurred after detention by Customs.
The director, IPR (Enforcement) shall refuse to entertain an incomplete application and inform in writing the applicant of the reasons for such refusal. Action to be taken by the Directorate of IPR (Enforcement): Director, IPR (Enforcement), upon receipt of an application from the right holder, shall consult the recordation database, so as to verify particulars of the right holder. When the right holder bas applied for enforcement action in accordance with the provisions of these rules, the Director IPR (Enforcement) shall order for detention of the goods suspected to be infringing goods and notify the same in writing to the applicant as well as to the owner of the goods, asking them to join the proceedings.
Upon joining the proceedings by both the owner of the goods and the right holder, the detained goods shall be examined jointly by an officer of customs appointed by the collector having jurisdiction and an officer of the Directorate General of IPR (Enforcement), in presence of both parties.
Upon determination of the fact that the detained goods infringe the Intellectual Property Rights of the Right Holder, such goods shall be seized by the Directorate General of IPR (Enforcement), and the case shall then be forwarded to the concerned Collectorate of Customs having jurisdiction for adjudication, as per the procedure laid down under the Act or judicial authority, as the case may be:
Provided that the owner of the infringing goods may, at any time prior to the seizure thereof, voluntarily give consent in writing to the Director IPR (Enforcement) for the goods being forfeited, in favour of the Federal Government, and upon receipt of such consent, the Director IPR (Enforcement) shall order forfeiture of the infringing goods, the FBR said.
The Director, IPR (Enforcement) to whom an application is made, shall ensure confidentiality of the information contained in the application, unless there is need of disclosure pursuant to any law of the country. In case a party to a proceeding willfully and without good reason refuses access to or otherwise does not provide necessary information within a reasonable period or significantly impedes a procedure relating to an enforcement action, the officer conducting enforcement action shall have the power to make preliminary and final determinations, affirmative or negative, on the basis of information presented to him including the complaint or the allegation presented by the party adversely affected by the denial of access to information, subject to providing the parties an opportunity to be heard on the allegations or evidence.
Action on receipt of information from Customs: An officer of customs, having reasonable grounds to believe that the goods infringing the provisions of the Copyright Ordinance, 1962 (XIV of 1962), the Trade Marks Ordinance, 2001 (XIX of 2001) or section 15 of the Act have arrived at the Customs station of his jurisdiction, shall with the prior approval of the concerned Additional Collector,- inform in writing the concerned Directorate of IPR (Enforcement) for taking cognizance in accordance with these rules.
Upon receipt of notice from the officer of customs intimating about arrival of infringing goods at the Customs station, the Directorate of IPR (Enforcement) shall immediately consult the recordation database to determine as to whether or not, any right holder of infringing goods is registered with IPO-Pakistan.
If the right holder of infringing goods is registered with IPO-Pakistan, the director IPR (Enforcement) shall issue him a notice intimating about arrival of infringing goods at a customs station and seeking right holder's consent to initiate enforcement action against the infringing goods.
In case the right holder is desirous of initiating enforcement action against infringing goods brought at a customs station, he shall submit an application along with notarised undertaking and bank guarantee, as prescribed under rule 680. Upon receipt of notice under sub-rule (4), the Directorate of IPR (Enforcement) shall proceed in accordance with rule 681. If the right holder does not opt for initiating enforcement action against the infringing goods, the Directorate of IPR (Enforcement) shall allow release of infringing goods and notify the same to the concerned Collectorate of Customs.
If the bank guarantee submitted by the applicant right holder is not sufficient to meet expenses incurred as a result of the enforcement action taken by customs under these rules and to cover the expenses as aforesaid, the differential amount shall be construed as a liability on the applicant, which shall be recovered from him under the provisions of section 202 of the Act.
Disposal of infringing goods: The infringing goods, upon confiscation or forfeiture shall be destroyed in accordance with the provisions of the Act. Re-exportation and local sale of counterfeit and pirated goods in any state, whether altered or unaltered or by subjecting them to a different customs procedure shall not be allowed.
The director IPR (Enforcement) or collector of customs having jurisdiction shall retain samples of counterfeit or pirated goods prior to their destruction or disposal, for a period of one year or during pendency of litigation or to display the same for informative or training purposes. The director IPR (Enforcement) or the collector of customs having jurisdiction may, in exercise of the powers conferred under section 15 of the Act, detain any goods for IPR infringement of health and safety standards, the FBR added.
Copyright Business Recorder, 2017