Border Protection for Trade Marks

Below you will find information about:

Customs notices for trade marks and copyright works in New Zealand; and
Australian Border Force notices of objection for trade marks and copyright works in Australia

New Zealand Customs Notices

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1. Requirements for filing Customs notices in NZ

Trade mark Customs notices

The owner of a NZ trade mark registration can file a notice with Customs with details of the trade mark registration (including a certified copy of the registration certificate), requesting that Customs detain any counterfeit goods that it identifies entering NZ that infringe, or potentially infringe, the trade mark registration in question.

Separate notices are required for each trade mark registration. We charge NZD$200 for each notice (this includes obtaining certified copies of the registration certificates).

The owner of a copyright work can file a notice with Customs with details of the copyright work (including details of the author and a copy of the work), requesting that Customs detain any goods that it identifies entering NZ that infringe, or potentially infringe, the copyright work in question.

Under NZ law, copyright protection comes into existence automatically when an original work is created and fixed – so registration of copyright is not required in New Zealand.

In the case of an artistic work that is industrially applied (more than 50 items are made), the copyright protection period is:

for a work of artistic craftsmanship, 25 years following creation:
for a sculpture that is a cast or pattern for an object that has a primarily utilitarian function, 16 years following creation; or
for any other artistic work, 16 years following creation.

Each copyright is assessed individually. Again, separate notices are required for each copyright work. We charge NZD$300 for each notice.

Period of notices

Notices (trade marks or copyright) will be in force for up to five years from the date the notice is filed (after which they can be refiled) or, if the trade mark or copyright in a work expires within the period of five years, then the notice will be in force for the lesser period.

Security

A cash security of NZD$5,000 is required at the time of filing the notices, along with a security instrument. The security instrument is a document that contains an indemnity clause allowing Customs to draw upon the cash security, if required, for the purposes of recovering any administrative or legal costs it incurs when enforcing a notice, such as storage and transportation of infringing items.

The security of NZD$5,000 is held by Customs in an interest-bearing trust account and is refundable at the end of the notice period, less any costs incurred. However, this system has been in place in New Zealand for over 10 years and, as far as we are aware, Customs has never deducted any money from a security.

2. Enforcement of a Customs notice in NZ

Once a notice is lodged, Customs will inspect shipments randomly for infringing goods, and will detain any goods it suspects of infringing the relevant trade mark and/or copyright work.

To assist, we can notify Customs if you have reason to suspect a particular person or business is importing infringing products, or if you know a particular manufacturer making or selling counterfeit products overseas.

When Customs detains infringing goods, it will give the importer the opportunity to forfeit the goods. Customs will then send us a letter identifying the importer and, usually, the source of the infringing goods. The letter will also state whether or not the importer has consented to forfeit the goods.

If the goods have not been forfeited we usually send a cease and desist letter to the importer demanding immediate forfeiture and, in some cases, payment of a contribution to the costs incurred.

We have a 10 working day period (extendable to 20 working days in limited circumstances) in which we can try to get the importer to forfeit the goods. If the importer does not agree to forfeit then the goods may be released to the importer, unless legal proceedings are filed against the importer.

Often the importer will not respond and we can work with Customs to treat the goods as abandoned, and later destroyed.

In our experience, the majority of importers agree to forfeit the infringing goods or the importer is not contactable and, in turn the goods are forfeited. Notices also have a deterrent effect. We are aware that importers review the Customs notices lodged and tend to avoid importing counterfeit goods where notices are in place.

Australian Border Force Notices of Objection

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1. Requirements for filing ABF notices of objection in Australia

Trade mark notices of objection

The owner of an Australian trade mark registration can file a notice of objection with ABF with details of the trade mark registration, requesting that ABF detain any counterfeit goods that it identifies entering Australia that infringe, or potentially infringe, the trade mark registration in question.

Separate notices are required for each trade mark registration. We charge AUD$200 for each notice.

The owner of a copyright work can file a notice of objection with ABF with details of the copyright work, requesting that ABF detain any goods that it identifies entering Australia that infringe, or potentially infringe, the copyright work in question.

Under Australia law, copyright protection comes into existence automatically when an original work is created and fixed – so registration of copyright is not required in Australia.

Each copyright is assessed individually. Again, separate notices are required for each copyright work. We charge AUD$300 for each notice.

Period of notices

Notices of objection (trade marks or copyright) will be in force for up to four years from the date the notice is filed (after which they can be refiled) or, if the trade mark or copyright in a work expires within the period of four years, then the notice will be in force for the lesser period.

Undertaking

A notice of objection must be accompanied by a deed of undertaking. This is a formal undertaking agreeing to repay the costs of ABF for any seizures made, such as transportation, storage and destruction costs.

2. Enforcement of ABF notices of objection in Australia

Once a notice is lodged, ABF will inspect shipments randomly for infringing goods, and will detain any goods it suspects of infringing the relevant trade mark and/or copyright work.

To assist, we can notify ABF if you have reason to suspect a particular person or business is importing infringing products, or if you know a particular manufacturer making or selling counterfeit products overseas.

When ABF detains infringing goods, it will give the importer 10 working days to forfeit the goods, which we will be notified of.

If the importer does not forfeit the goods, we usually send a cease and desist letter to the importer demanding immediate forfeiture and, in some cases, payment of a contribution to the costs incurred.

We have a 10 working day period in which we can try to get the importer to forfeit the goods. If the importer does not agree to forfeit then the goods may be released to the importer, unless legal proceedings are filed against the importer.

Often the importer will not respond and ABF will treat the goods as forfeited, and will later destroy the goods.

In our experience, the majority of importers agree to forfeit the infringing goods or the importer is not contactable and, in turn the goods are forfeited. Notices also have a deterrent effect. We are aware that importers review the notices of objection lodged and tend to avoid importing counterfeit goods where notices are in place.