Notices of Objection – Mechanising the Australian Border Force to Protect Your Intellectual Property
How a Notice of Objection can protect your IP rights
By themselves, registered trade mark and copyright rights offer no physical protection to the importation of infringing goods into Australia.
A Notice of Objection allows the registered owner of a trade mark or copyright to mobilise the Australian Border Force to seize goods at Customs when they appear to infringe recorded IP rights.
If goods are seized by the ABF, the registered owner of the infringed trade mark or copyright can pursue legal action against the importer of counterfeit goods to forfeit them.
Introduction
Safeguarding your brand, ideas, or other intellectual property (IP) with registered trade mark and/or copyright protection is well-established and proven to be an important business decision. Ensuring that the integrity of your commercial or personal creation is upheld yields advantages beyond the legal rights gained by registration, such as accumulating goodwill and providing financial benefits. While these pros (and many more) are generally recognised and understood, the ability to restrict the importation of potentially infringing goods across the Australian border is often overlooked as a protective measure. Owners of Australian trade marks, copyrights, protected Olympic emblems and specified sporting indicia are eligible to apply for a Notice of Objection, mechanising the Australian Border Force to seize counterfeit goods at the Customs stage, before they have a chance to reach the Australian market.
What is a Notice of Objection?
A Notice of Objection is a legal document submitted by (or on behalf of) a registered owner of Australian intellectual property that enables the Australian Border Force to seize goods that infringe on recorded IP rights. The forms of IP that are eligible to receive this added protection include trade marks (Trade Marks Act 1995), copyright (Copyright Act 1968), protected Olympic expressions (Olympic Insignia Protection Act 1987) and indicia and images relating to major sporting events (Major Sporting Events (Indicia and Images) Protection Act 2014). Clearly the two most commercially relevant IP types of those eligible are trade marks and copyright, and such this article will focus primarily on their afforded protections.
Who can apply for a Notice of Objection?
Generally, the right to lodge a Notice of Objection rests with the registered owner of a trade mark or copyright. In specific circumstances, authorised users may be permitted to apply on behalf of an owner, provided consent is given by the owner or other conditions are met. Notices of Objection are particularly valuable tools for owners concerned about the potentially negative impact of imported infringing goods on public image, profitability and commercial relations.
What protection does a Notice of Objection offer?
A Notice of Objection offers a broad scope of power for Customs officials to seize goods that infringe or appear to infringe trade mark or copyright rights. All goods that pass through Customs control will be assessed, and goods must be covered by the scope of an existing Notice of Objection to be eligible for seizure. The final requirement for confiscation is that the imported goods are intended to be used for trade and/or commerce, granting protection from commercial interference. A Notice of Objection in relation to trade marks, copyright, or protected Olympic expressions is valid for four years, and requires re-lodgement to be enforceable after this period. It is noted that a Notice of Objection for indicia and images relating to major sporting events is generally only valid for up to one year. Notices of Objection must also relate to current registered IP rights, so if a trade mark’s ten year lifespan expires without renewal, the attached Notice of Objection will too expire.
What happens if imported goods are seized at the border?
After taking confiscatory action against potentially infringing goods (such as counterfeit goods), the Australian Border Force will provide formal notification (in writing) to both the objector (owner of the IP rights) or their legal representative and the importer (person responsible for importing infringing goods). This information will provide the objector with vital information about the importer and their products, equipping the IP owner with the necessary tools to take further action if required.
What action can be taken against importers of infringing goods?
Once both parties have been notified of the seizure of goods, a ten working day period commences (the claim period). During this period, the importer may claim for the seized goods to be released, at which point the objector will be notified and be granted ten working days to begin legal action or consent that the goods be released to the importer (the action period). If no such claim is made by the importer within the claim period, the importer forfeits the goods, usually resulting in their destruction. If the objector fails to take action within the action period, the goods will likely be released to the importer. If the objector instead decides to take legal action against the importer, the goods will be secured by the ABF while court proceedings transpire. The courts will determine whether the goods should be forfeited to the Commonwealth or released to the importer, making an appropriate order.
What is a Deed of Undertaking?
Each Notice of Objection must be accompanied by a Deed of Undertaking. This signifies a formal agreement whereby the objector agrees to repay any incurred costs related to the seizure of goods by the Australian Border Force, such as storage, transportation and destruction costs. There is no upfront government fee for obtaining a Notice of Objection; the obligation of payment only arises if necessary action must be taken by the ABF against infringing goods.
Benefits of a Notice of Objection
A Notice of Objection provides you as an owner of copyright and trade mark rights with additional protection against infringement. It acts as a strong barrier against overseas counterfeit competitors and domestic infringers who outsource production overseas and import imitator products back into Australia. This protects your market share and business reputation, ensuring that the integrity of your brand or creation does not suffer from infringement.
The Australian Border Force are an extremely powerful weapon of enforcement, with a direct incentive to support your cause. Due to the associated health and safety risks of unregulated, counterfeit goods entering Australia, the ABF’s objectives of upholding national security align with your goal to protect your IP. A Notice of Objection is a valuable agreement that mechanises the ABF to enforce your trade mark or copyright right, increasing the value of your IP and offering cost-effective protection.
How can I apply for a Notice of Objection?
If you are looking to protect your intellectual property domestically and/or internationally, our team has extensive experience navigating the complex world of IP in a manner that is cost-effective and beneficial to you or your business. Additionally, if you wish to gain a formidable enforcer against imported goods that infringe on your rights, get in touch with our team anytime by booking a free consultation and we’d love to help achieve your commercial or personal goals.
William Jameson, Lester Miller.