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The value of lodging Border Protection Notices with Customs Service
According to the Customs Service of New Zealand's Annual Report for 2016/2017, 44,520 individual suspected counterfeit goods items were intercepted at the border (the latest reported figures on infringing products).
The easiest way to prevent the sale and distribution of infringing goods in New Zealand is to prevent their importation into New Zealand by lodging border protection notices with the Customs Service.
Filing a Notice
Such notices can be lodged under the Trade Marks Act 2002 and the Copyright Act 1994 for both registered trade marks and copyright works. The lodging of the notice can be a significant deterrent to potential infringers as the existence of the notice is recorded on the Customs Service website.
The Customs Service is very eager to prevent the importation of counterfeit goods. To this end, the previously required NZ$ 5,000 bond that was required when filing a notice has recently been dispensed with and is no longer necessary. This makes the filing of the notice more accessible to smaller brand owners (if you have previously paid such a bond, it will be refunded by Customs Service).
The filing of border protection notices is an easy way to protect your registered trade marks and copyright works in New Zealand therefore, we recommend that you file them. To file a notice with the Customs Service we will require:
- details of the relevant registered trade mark or copyright work;
- a signed deed of indemnity; and
- a signed authorisation of agent.
Under both the Trade Marks Act and the Copyright Act the party in whose name the the border protection notice is filed must indemnify the Chief Executive of the Customs Service from all loss, damages, costs and liability suffered or incurred by the Chief Executive in good faith by the Chief Executive in carrying out his or her duties and exercising his or her powers under the Trade Marks and/or Copyright Acts in connection with or as a result of:
- the examination, detention or determination of any goods or items following upon the information contained in the Notice, and
- any proceedings, actions, claims or demands consequent upon the examination, determination, and/or detention of such goods during the Period of the Notice.
Once a notice has been filed
The existence of the Notice will be published on the Customs Service website.
When the Customs Service discovers potentially infringing goods at the border, they will investigate to determine whether or not the goods appear to infringe the notice. If Customs Service considers this to be the case, they will detain the goods and serve a notice of determination on the importer or exporter of the goods and the rights holder who filed the notice.
The served importer/exporter has the option of voluntarily forfeiting the goods to the Crown in which case, Customs Services will arrange for the destruction of the goods.
If an importer or exporter disputes a notice of determination, the rights holder will have 10 working days from the issue date of the notice of determination to either persuade the importer or exporter to forfeit the goods, or obtain an order from the High Court declaring the goods to be infringing goods. The 10-working day period may, on application, be extended to 20 working days if the Customs Service considers it appropriate to do so. If the rights holder chooses to take no action against an importer who disputes a notice of determination, the detained goods will be released.
The value of filing a notice
Hopefully the value of preventing the importation of counterfeit goods is self-evident!
The risks of the sale of infringing goods is many fold. As well as lost sales your brand could suffer harm by the sale of inferior products. Depending on your goods there could be safety issues. If the product is faulty you may find yourself dealing with a customer complaint and an expectation or demand to replace the goods. In that case, you are facing the costs of making good on a sale you did not make in the first time to protect your company's or brand's reputation.
None of these scenarios are ones in which reputable brands will want to find themselves.
Contact Elena or David if you have any queries about border protection notices or wish to file them with Customs Service.
June 2020
