ISLAMABAD: The Federal Board of Revenue (FBR), amending Customs Rules, 2001 through an SRO 170 (1)/2017, has authorised the Directorate General of Intellectual Property Right (IPR) (Enforcement) to confiscate imported goods suspected to be infringing goods for enforcement of IPR under the Copyright Ordinance, 1962 and Trade Marks Ordinance.
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.
