In this current age, with counterfeit goods on the rise, measures such as recording one’s intellectual property with the customs authority in order to curb infringement is a necessity. More information regarding the procedure and requirements for recordal with the customs authority are available here and here. It is pertinent to note that although World Intellectual Property Organization (WIPO) has specifically mandated that trademarks and copyrights be protected under Articles 51 to 60 of the Agreement on Trade-Related aspects of Intellectual Property Rights (the TRIPS Agreement), the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 (hereinafter referred to as the Rules) i.e. the rules governing recordal of IP rights with customs authorities, especially regulates and accords protection to copyrights, trademarks, designs and geographical indications, when it comes to imported goods.[1]
Customs Recordal in India & Limitations with Renewal
The period of customs recordal is 5 years or until the expiry of the relevant intellectual property right, whichever is earlier. The Rules, strange as it may be, provide no option or provision to refer to in case of renewal of the recordation.
Seemingly, the sole option that remains would be to refile the application for recordal of customs itself. Upon payment of a fee of INR 2000, an Applicant could file a fresh application for recordal of customs. The process of filing an application is tedious in itself, but to refile the same application would be all the more irksome.
However, the question remains – why has an option for renewal not been provided? Granted, it would ensure fewer instances where the right would have lapsed, and the protection would continue unbeknownst to the authorities (although the right holder must inform customs authority when his intellectual property ceases to be valid or if he ceases to be the owner of such intellectual property right). In this respect, the lack of an option for renewal enables authorities to properly examine the authenticity of the application and every detail provided. Regardless, this can be remedied by ensuring that the owner provides proof of the existence of the right by way of a registration certificate or a certified copy.
Additionally, there also exists the possibility that the reason why renewal has not been provided for is that the Rules provide a much wider scope of protection than what has been mandated by the TRIPS Agreement. It has been noted that determining whether infringement has taken place or not with regard to patents, designs and geographical indications could be challenging for Customs officers in the absence of a judicial pronouncement that would require mere implementation of the same. Extreme caution would be required while determining infringement of these three intellectual property rights.[2] A process such as renewal would facilitate easy protection of one’s intellectual property rights and could adversely affect the rights and potential business of the importer as their goods could be seized on mere suspicion of infringement. Seizure of an alleged infringer/ importer’s goods would result in undue delay, monetary loss and could potentially render the very purpose of importation infructuous.
In order to encourage holders of intellectual property, a separate provision for renewal is necessary to facilitate the proper protection of their rights. Instead of refiling the entire application, a simplified form may be provided for renewal simply requiring proof of the subsisting right and renewal of the existing application. It would perhaps also assist authorities as opposed to having to scrutinize an entire application all over again.
Renewal would also be of assistance if the authorities were to send an intimation letter regarding the expiry of the term of their recordal with the Customs Department. This would remind owners that their recordal with the Customs Department is near expiry and requires renewal.
Easy Renewal & Lesser Scope for infringement
All things considered, for advancement in respect of customs recordal, an option for the renewal of applications would be beneficial for right holders as the same would facilitate smooth enforcement of their intellectual property rights. Intellectual property, being matters of right where time is of the essence, even the minimal time frame that remains between the expiry of an application for customs recordal and the time when a new application is filed could potentially cause irreversible loss to the holder of the intellectual property as a multitude of infringing goods could enter the market and the holder would not have had the opportunity to prevent entry at the earliest instance.
[1] The Rules previously provided protection for patents as well. This has been amended by the Intellectual Property Rights (Imported Goods) Enforcement Amendment Rules, 2018.
[2] Circular No. 41 /2007-Customs dated October 29, 2007.
This article has been authored by Shana Varughese
