No. 26
September 2012
International Association for the Protection of Intellectual Property
AIPPI General Secretariat |Toedistrasse 16 | P.O.Box |CH-8027 Zurich
Tel. +41 44 280 58 80 | Fax +41 44 280 58 85
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Improvements to the Notice of Objection Scheme resulting from the IP Laws Amendment (Raising the Bar) Act 2012
Melanie Jose, The Australian Customs and Border Protection Service, Canberra, Australia

The Notice of Objection Scheme provides Customs with the power to detain and seize goods that are suspected of infringing copyrights, trade mark rights or protected Olympic expressions.

In order for Customs to seize such goods, the rights holder (Objector) must have lodged a Notice of Objection with Customs. Once a Notice of Objection is lodged it is valid for four years.

When goods are seized under the Notice of Objection Scheme, a notice of seizure is issued to both the Objector and the importer. The Objector then has ten days from receipt of the notice of seizure within which to initiate infringement against the importer (the Action Period).

The matter then progresses through usual court proceedings. If the Court determines the goods to be infringing, the goods are forfeited to the Crown and disposed of. If, however, the Court determines that the goods to not infringe IPR, the goods will be released to the importer. In cases where the Objector has not initiated legal proceedings the goods are released to the importer.

The importer also has the option to voluntarily forfeit the goods at ay time during the Action Period unless or until the Objector initiates legal proceedings.

Certain loopholes under the current Notice of Objection Scheme operate in favour of recidivist importers. Specifically, an importer can purposefully be unavailable during the Action Period so as to frustrate an Objector's attempts to initiate legal proceedings and serve legal papers on the importer. In addition, importers wishing to avoid legal proceedings may also provide false contact details to Customs and/or the Objector.

Current provisions in the Trade Marks Act and the Copyright Act also make it difficult for rights owners to obtain the information necessary to determine whether to institute infringement proceedings.

The Raising the Bar Act has introduced a number of elements designed to tighten up the Notice of Objection Scheme. One such element is the introduction of a claim for release of the seized goods. This change requires an importer who wants seized goods to be returned to them to provide Customs with that information which is necessary for the Objector to identify and contact the importer or designated owner of the goods. For example, an address where the rights holder can serve legal documents on the importer.

The importer or designated owner can only reclaim the seized goods by providing Customs with the claim for release form. If the importer does not lodge a claim for release of the goods with Customs within ten days of receipt of the notice of seizure (the Claim Period) the goods will be forfeit to the Crown. This ensures that importers and designated owners are not able to avoid prosecution and still retain the infringing goods. It also means that importers and designated owners are not able to reclaim the goods without giving the Objector information that will assist the Objector to test the matter of infringement in court.

Further, changes to the Notice of Objection Scheme will allow Customs to provide the Objector with information about exporters and consignors and other players in the supply chain. This means that the Objector will no longer be forced to apply for a court order to obtain this same information. It will also assist the Objector to identify recidivist importers and other players in the supply chain of infringing conduct.

The amendments also permit the Customs CEO (or delegate) to allow for the inspection or removal of multiple samples of the seized goods. By allowing access to a representative sample of suspected infringing goods, the Objector will be in a better position to make an accurate determination as to whether and to what extent, the consignment contains infringing goods.

Counterfeit goods are often poorly manufactured and, as a consequence, present serious risks to the health and safety of unsuspecting consumers. It is anticipated that the changes to the Notice of Objection Scheme, resulting from the Raising the Bar Act will make a significant reduction to the number of such goods released back into the market place.
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