One way of enhancing protections and enforcing your rights as a registered trade mark owner or authorised user (eg. a licensee) is to file a Notice of Objection (Notice) with the Australian Border Force. Once filed and accepted, the Notice allows Border Force officers to seize imported goods that infringe registered trade marks at customs. Infringing goods will usually be substantially identical or deceptively similar to a trade mark that has a Notice filed. Under Australian trade mark laws deceptively similar means, in short, that a trade mark so closely resembles another trade mark that it will likely deceive or cause confusion.
Recording a Trade Mark with the Australian Border Force
A Notice of Objection can only be filed with the Border Force if it relates to a current trade mark registration. Notices cannot be lodged for pending or expired registrations. A Notice is valid for four years and can be re-lodged at the end of that four year period if ongoing protection is required. It can also be withdrawn at any time if no longer required, for example, if a trade mark expires during the four-year protection period, or if a trade mark is assigned to a new owner and the owner who lodged the Notice is no longer the same. If a Notice expires before being renewed, a new Notice would need to be lodged.
What happens when a Notice of Objection is filed?
Once a Notice is filed, imported goods that appear to infringe a registered trade mark and are intended for commercial purposes can be seized. Once seized, the importer and registered trade mark owner (or their legal representatives) are notified and the importer is given 10 working days to make a claim for release of their seized goods. When a claim is made, the trade mark owner has 10 working days to either commence legal action to prevent the release of the goods or to consent to the release of the goods to the importer.
If no legal action is taken, the goods are released to the importer provided they meet all the legislative requirements. If legal action is commenced, the goods will be held until the court orders that the goods will either be released to the importer or forfeited to the Commonwealth.
Goods forfeited to the Commonwealth are then disposed of, which usually means the goods will be destroyed. The costs incurred from any seizure of infringing goods are to be repaid by the trade mark owner – a requirement of filing a Notice includes filing a Deed of Undertaking with the Notice that the trade mark owner agrees to repay the costs arising from any seizures made. Costs may be incurred for things like transport and storage as well as destruction.
Is it worth filing a Notice of Objection?
For any registered trade mark owners or authorised users, the answer is probably yes. Filing a Notice is a relatively straightforward and painless process that gives you added protections against counterfeit goods that may, or actually do, infringe your registered trade mark before they even enter Australia. Showing that you're prepared to defend your registered trade marks and exercise your rights as a registered owner may also act as a deterrent for anyone who might seek to profit from infringing your registered trade marks.
A quick glance at the list of Notices on the Australian Border Force website shows just how many recognisable organisations across all industries seek to protect their registered trade marks in this way. Companies like Apple, Dyson, Pfizer, Johnson & Johnson and Lego are just a few of the most well known brands seeking to protect and enforce their trade marks in Australia from infringement.
Some companies that have successfully been granted injunctions to prevent the release of infringing goods or had orders made for the destruction of infringing goods include:
- Jemella Australia Pty Ltd – the licensed user for the GHD trade marks in Australia and New Zealand who were successful in restraining a woman importing counterfeit hairstyle products that infringed the GHD registered trade mark. See Jamella Australia Pty Ltd v Steffensen (No 2) [2009] FCA 296
- The Walt Disney Company (Australia) Pty Limited – 1,180 Minnie Mouse tops were seized by customs that had images of Minnie Mouse, the words 'Original Minnie', 'Original Mickey' and '©Disney' and Disney were successful in their application to not have the goods released to the importer. See Disney Enterprises, Inc v Sondavid Pty Ltd [2008] FCA 1394
- Sony Computer Entertainment Australia Pty Ltd – there have been multiple instances where counterfeit CDs or DVDs have been seized at customs that appeared to be Sony PlayStation games and/or bearing markings and wording substantially identical or deceptively similar to registered PlayStation or PS trade marks, with the goods ordered to be forfeited to the Commonwealth and destroyed. See Sony Computer Entertainment Australia Pty Ltd v Yansen [2002] FCA 1000, Sony Computer Entertainment Australia Pty Ltd v Saleh [2001] FCA 717
Reassurance of trade mark protections
Regardless of the size of your business or the number of trade marks your business uses, the above examples show just how important it can be to protect your trade marks from infringement beyond registration. Registration with IP Australia offers you specific rights as the registered trade mark owner, but filing a Notice with customs means you'll be notified of any alleged infringement as it is identified at customs. Arming your business with the ability to enforce your protections demonstrates to competitors and potential infringers that your business is serious about protecting its valuable trade marks.
It is also possible to record your registered trade marks with customs organisations in other countries to protect against the importation of infringing products internationally. The process differs for different countries and Clifford Gouldson Lawyers has numerous international agents who can provide country specific advice regarding local trade mark protections.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.