Counterfeiting, piracy and
Notices of Objection

Pirated and counterfeit goods lessen the value of legitimate brand names, erode profits and damage business reputation. Davies Collison Cave can help you lodge “Notices of Objection” with Australian Customs, which permit Australian Customs to seize goods that infringe trade marks and copyright if they are imported into Australia.

Seizure of infringing items by Australian Customs

Lodging a Notice of Objection with Customs is a cost effective means of tackling goods that infringe intellectual property rights, before they enter the Australian market.

Who can lodge a Notice of Objection with Australian Customs?

Under the Trade Marks Act 1995 and the Copyright Act 1968, a trade mark owner, an authorised user of a trade mark, a copyright owner, or the owner’s exclusive licensee may lodge a Notice of Objection with the Australian Customs Service objecting to the importation of:

• goods that have a trade mark applied to them which is substantially identical with or deceptively similar to a registered trade mark nominated in the Notice of Objection; and/or
• copies of nominated copyright material, if those copies would have constituted an infringement of copyright if the copies had been made in Australia by the importer.

What is covered by a Notice of Objection

A Notice of Objection provides Customs with details of genuine trade marks or copyright material and details of who owns the trade marks and/or copyright material.

Trade mark Notices of Objection are limited to the goods for which the trade mark is registered. If a trade mark is a stylised / device mark or includes a drawing or other artistic or literary work in which copyright subsists, it would be appropriate to lodge a Notice of Objection in relation to those copyright works as well.

How a Notice of Protection protects your marks

If a Notice of Objection has been lodged and Customs becomes aware of a shipment of goods that it suspects are not genuine and that it believes are intended for commercial use (eg. sale, lease, hire), it will seize and hold the goods for a limited period of time.

Customs is not able to seize certain articles in relation to copyright because of parallel importation laws. Further, a Notice of Objection will not be effective against the importation of genuine goods. We would be pleased to advise you further on these issues.

The term and validity of Notices of Objection

A Notice of Objection is valid for four years. The Notice may be re-lodged to ensure ongoing protection. If the Notice is no longer required, it may be withdrawn. Separate Notices of Objection are required for trade marks and copyright. However, each notice can refer to multiple trade marks or copyright material. A Notice of Objection cannot act retrospectively for goods that have already been imported.

The seizure process

Where a Notice of Objection is in place and Customs seizes goods it will send a Notice of Seizure to the importer and rights-holder. In the following ten day period:

• the rights-holder may commence legal action or consent to the release of the goods; or
• the importer may voluntarily forfeit the goods, if legal action has not commenced.

If the rights-holder does not commence legal proceedings, Customs must release the goods to the importer unless they have been voluntarily forfeited.

Disposal of forfeited goods

If the goods have been voluntarily forfeited Customs will dispose of the goods by destruction or donation to a charity or in accordance with an order of the Court. The Court will make an order regarding the goods at the conclusion of any legal proceedings that may be initiated.

How to lodge a Notice of Objection

The following information or documentation needs to be provided to Customs to lodge a Notice of Objection:

1. The name of the intellectual property owner or authorised user/exclusive licensee.
   Authorised users or exclusive licensees will need documentation to demonstrate that they are eligible to lodge a Notice of Objection, for example evidence that they have the agreement of the trade mark/copyright owner.
2. Details of the trade marks and copyright material
   • For trade marks, details of the registration, including the registration numbers, the expiry dates and registered classes of goods are all required.
   • For copyright, full details of the copyright material, the importer’s name or ABN and any photographs or drawings of the copyright material are required.
3. Contact information in the event of a seizure
   Given the short period of time that the objector has to act if goods are seized (ten days), we strongly recommend Davies Collison Cave is listed as the contact on a Notice of Objection in the event of a seizure so that swift action can be taken.
4. Written undertakings to repay the Commonwealth’s expenses of seizure If a written undertaking is provided, Customs may require payment of security sufficient to meet the expenses of seizing goods incurred by Customs. If Customs requires any payment for its expenses, Customs will not be obliged to seize any goods until payment has been made in full. Customs may recover the outstanding debt in Court proceedings.

Information that will assist Customs

It is useful to provide Customs with additional information that will assist in identifying and intercepting suspected counterfeit goods. These can include:

• your company’s shipping logistics into Australia,
• names of authorised importers,
• modes of transport used to import goods,
• names of authorised distributors,
• the country of manufacture of genuine goods,
• details of suspected infringing importations, and
• photographs of genuine and counterfeit goods.

Davies Collison Cave can help you lodge and manage Notices of Objection

Our firm has extensive experience in lodging and handling Notices of Objections for small local businesses to international corporations with substantial trade mark and copyright portfolios.

Davies Collison Cave can respond quickly when Customs seizes counterfeit goods:

• preparing letters of demand for the forfeiture of the infringing goods;
• seeking written undertakings from the importer not to repeat the infringement;
• in the event it is necessary to issue court proceedings, our IP law team stands ready to assist.

Get in touch with Davies Collison Cave to learn more about our trade mark protection services.