Border Measures and other Means of Customs Intervention against Infringers

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1 Question Q208 National Group: Title: Contributor: Peru Border Measures and other Means of Customs Intervention against Infringers Juan Carlos Durand Grahammer Date: February 2009 I. Analysis of current law and case law The Groups are invited to answer the following questions under their national laws: 1. Do the laws of your country provide for border measures? If so, what is the legal basis? Trademarks: TRIPS Section 4: special requirements related to border measures Andean Community, Decision N 486 articles Andean Community, Decision N 689 article 1 j) Legislative Decree N 1092 Law on Border Measures for the Protection of Copyrights and Trademarks Supreme Decree N EF Regulations on Border Measures for the Protection of Copyrights and Trademarks Resolution Custom Agency N /SUNAT/A Ex - Parte Measures on parties request Copyrights and Related Rights: TRIPS Section 4: special requirements related to border measures Legislative Decree N 822 Copyright Law, article 31 Legislative Decree N 1092 Law on Border Measures for the Protection of Copyrights and Trademarks Supreme Decree N EF Bye-laws on Border Measures for the Protection of Copyrights and Trademarks Custom Agency Resolution N /SUNAT/A Ex Parte Border Measures 2. Do the laws of your country provide for other measures of customs intervention against infringers? Yes, via a precautionary order based on a Court order. If so, which ones and what is the legal basis? Code of Civil Procedure / Code of Criminal Law Procedure. 1

2 3. Are border measures and other measures of customs intervention against (collectively referred to as border measures ) only available for pirated copyright and counterfeit trademark goods or also for goods infringing other IP rights? The Law on Border Measures for the Protection of Copyrights and Trademarks only stipulates border measures for pirated copyright and counterfeit trademark goods. [Legislative Decree N 1092 Law on Border Measures for the Protection of Copyrights and Trademarks article 1 ] If so, for which types of IP rights are border measures available? Trademarks and copyrights Are border measures in particular available for goods infringing patents, plant variety rights, common law marks, unregistered design rights, or geographic indications? Is actual registration of the IP rights required or is an application to register sufficient? The registration of the title holder of the IP rights along with the indication of the registered right before the customs authority is required in ex-parte actions. In order to obtain registration before customs, it is required that the IP right is previously registered before the Peruvian Trademark/Copyright Office Ex- Officio specific requirements are not yet regulated by the custom authority. [Resolution Custom Agency N /SUNAT/A, article 9 d)] Does unfair competition, passing off or the like give rise to border measures? 4. Are border measures available for parallel imported goods? [Trademarks: Andean Community, Decision N 486 article 158 ] [Copyrights and Related Rights: Andean Community, Decision N 351 article 13 d)] Are border measures available for goods contained in a travellers private luggage? Border measures are not available for goods contained in a travellers private luggage. The exclusion only operates for goods in small amounts which have no commercial purpose and which are part of the travellers private luggage. [Andean Community, Decision N 486 article 256 and Legislative Decree N 1092 article 3.2 ] Are there any other goods excluded by your border measures legislation? 2

3 Yes, in addition to the goods contained in a travellers private luggage, shipments of goods in small amounts with no commercial nature are also excluded. The FOB value of the goods must be under US$ to be considered as non commercial merchandise. [Andean Community, Decision N 486 article 256 and Legislative Decree N 1092 article 3.2 ] 5. Who is entitled to file an application for customs action? Trademarks: The owner of a registered trademark. [Andean Community, Decision N 486, article 250 ; Legislative Decree N 1092, article 2 h)] Copyrights: The author or the owner/title holder of the copyright. [Legislative Decree N 1092, article 2 g)] Is there a centralised system for managing multiple applications for customs action through a single contact point? The Peruvian customs authority handles all applications for border measures as a centralized contact point. What are the conditions for border measures? In case of ex-parte border measures applications, petioner s trademark or copyright must be previously registered before the Voluntary Register of the Custom Authority. A requisite for the recordal at the voluntary registry is that the trademark/copyright, be previously registered at the Trademark/Copyright Office. [Custom Agency Resolution N /SUNAT/A, article 3] The petioner must also submit with the application a guarantee issued by a financial entity (in case of private entities) or a non-banking security (in case of government authorities and/or similar) in order to cover any possible damages infringed to the party subject to the border measure. [Supreme Decree N EF, article 8, 9, 10 and Custom Agency Resolution N /SUNAT/A, article 38] The custom authority has not yet ruled the particular requirements for border measures initiated ex-officio. In particular, what level of evidence for alleged infringement and other information is required by customs authorities regarding the application for customs action? Further to the registration of the trademark or copyright before the custom authority, applicant must describe the presumably infringing goods. Also applicant must provide the Custom Declaration number, along with the information regarding the importer, exporter, consignee, country of origin or destination, country of precedence, means of transportation, as well as the information of which applicant would reasonable have knowledge. To which extent are customs authorities willing to receive training by the right holder? No official pronouncement is available about the willingness of the customs authorities to receive training by the right holders. 3

4 Do customs authorities generally require the provision of a security to protect the owner, holder or importer of the allegedly infringing goods? Yes If so, will such security depend on the type of IP rights? The security is equally required for copyrights and trademarks (20% of the FOB value or in the event of perishable goods 100% of FOB value). May the customs authorities take ex officio measures? It must be pointed out that the entry in force of ex officio measures has been postponed by the Fourth Provision of Title IV of Legislative Decree N 1092, until 1 February [Legislative Decree N 1092, articles 9 and 10 ; Supreme Decree N EF, articles 16, 17, 18 and 19 ] If so, what is the practical relevance of ex officio action in your country? The practical relevance for ex officio actions is the immediate detention of the allegedly infringing goods. Are customs authorities liable in case of wrongful ex officio detention? [First Provision of Title IV of Legislative Decree N 1092] 6. Are customs authorities properly equipped to identify goods which infringe patents, plant variety rights, common law marks, unregistered design rights, geographic indications or the like? 7. Is only the right-holder or also the owner, holder or importer of the allegedly infringing goods notified once the customs authorities detain goods? In case of ex-parte border measures applications, the Custom Authority notifies the detention of the goods to the Custom Clearance Agency of the importer, exporter, shipper or consignee of the allegedly infringing goods. In case of ex-officio border measures, the custom authority has not yet ruled the notification process for the right-holder or also the owner, holder or importer of the allegedly infringing goods. How can the alleged infringer obtain information about the status of border measures and what information is provided by customs authorities to the alleged infringer? Besides the notification to the alleged infringer of the detention of the goods, the legislation on border measures does not establish expressly an obligation for the customs authorities to provide additional information nor to keep the alleged infringer informed about the status of the border measures. 4

5 8. What happens after notification? Briefly describe the procedure following notification. After the notification of the detention of the goods, the Trademark Office or the Copyright Office, respectively, proceed to inspect the goods. The detention of the goods is granted by the Custom Authority for 10 working days beginning from the day of notification to the petioner of the border measure. If the petioner of the border measure does not file in that term an infringement action against the alleged infringer before the Trademark Office or the Copyright Office, respectively, the goods have to be released by the custom authority. If the petioner files an infringement action before Trademark Office or the Copyright Office, respectively, in the mentioned term the border measure will be extended for a term of 10 working days. During that period, if the Trademark Office or the Copyright Office, respectively, does not order a precautionary measure to detain the goods, the border measure will expire and, consequently, the goods shall be released by the custom authority. If the precautionary measure is granted, the goods will be put under the custody of the Trademark Office or the Copyright Office, respectively, until the case is decided. In the event that the Trademark Office or the Copyright Office, respectively, decides that an infringement was perpetrated, the pirate or counterfeit goods may be donated for non profit purposes, previous removal of the illegal signs from the goods. Regardless of the removal of the illegal signs from the goods, confirmed counterfeit goods can not be introduced into the commercial circuit nor be exported. Only by disposal of a Court, the Trademark Office or the Copyright Office, respectively, are authorized to destroy counterfeit or pirate goods. In case that the Trademark Office or the Copyright Office or the Judiciary decides that no infringement has taken place, the goods shall be released and the affected party be entitled to enforce the security in his favour. Is the inspection of the allegedly infringing goods following notification usually carried out by the right holder or by an expert? The inspection is carried out by the officers of the Trademark Office or the Copyright Office, respectively, with the presence of the right holder, if he asks for it. Does your border measures legislation provide for a simplified procedure allowing the destruction of the goods without there being any need to determine whether IP rights have been infringed? Only the Courts may order the destruction of the pirate or counterfeit goods, previous determination that the goods have infringed IP rights. If so, in which cases? Not applicable 5

6 Are samples of the goods preserved for evidence purposes? If the Trademark Office or the Copyright Office, respectively, has not granted precautionary measures to detain the goods, these have to be released by the custom authority. The border measure legislation does not regulate the preservation of samples of the goods for evidence purposes. If proceedings must be issued to determine whether the goods infringe IP rights, are both civil and criminal proceedings available to determine infringement? Yes, however, the proceeding to determine the infringement is solved at the administrative level before the Trademark Office or the Copyright Office, respectively. The Civil Courts are competent to solve actions against an administrative decision (judicial review). A criminal proceeding can be alternatively or jointly initiated. What are the advantages and disadvantages of the respective proceedings? The advantage of the administrative proceeding is that it is solved by experts in short time. However, certain faculties are not granted to administrate authorities, which reduces efficiency (i.e. destruction of counterfeit or pirate goods, house breaking) Criminal or civil actions are solved by the Judges with insufficient knowledge or experience in Intellectual Property Rights. The efficiency is low. The proceeding is long. Advantages for civil or criminal proceeding are the faculty to destroy counterfeit or pirate goods or to imprison the offender, respectively or authorise the entry into private premises for the purpose of conducting a search. What is the impact of a nullity action seeking to invalidate IP rights on the application for customs action? There is no case law in Peru on the impact of a nullity action on the border measures applications before the custom authority. However, in the infringement proceeding and depending on the chances of success of the nullity action, the effect could be that the competent authority may not grant precautionary measures or may even suspend the infringement proceeding until the nullity proceeding is previously decided. However, if the nullity action is prima facie groundless, the competent authority should not suspend the infringement action or inhibit itself to grant precautionary measures. May customs authorities release goods suspected of infringing IP rights on provision of a security by the owner, holder or importer of such goods? No If so, will such release depend on the type of IP rights? Not applicable 9. If goods are found to infringe IP rights, may a right holder oppose - exportation of infringing goods from your country; Yes - infringing goods in transit; 6

7 Yes - placement of infringing goods in a free trade zone or free trade warehouse? The legislation on Border Measures does not explicitly regulate the situation of counterfeit or pirate goods located in these areas or under these export/import regimes. In addition, there is no case law in Peru in this regard yet. 10. If goods are found to infringe IP rights, do the judicial or customs authorities of your country generally order the destruction of the goods or do they have the authority to dispose of the goods outside commercial channels (e.g. to charity)? The goods that are found to infringe IP may be destroyed by express order of the Judiciary or disposed in a different way with the approval of the title holder or owner of the IP right. The pirate or counterfeited goods may be donated to non profit purposes, prior removal of the illegal elements from the goods. Regardless of the removal of the illegal signs from the goods, confirmed counterfeit goods can not be introduced into the commercial circuit nor be exported. May the competent authorities also order the infringer to give the names of his accomplices, upstream or downstream in the channels of production and distribution? 11. May judicial or customs authorities order the applicant to pay the owner, holder or importer of goods appropriate compensation for any injury caused by wrongful detention? All border measure applications require the submission of a security in order to protect the owner, holder or importer of the allegedly infringing goods. If the competent authority (after a proceeding) established the inexistence of an infringement, the security is granted to the affected party. The legislation on border measures does not regulate an additional compensation for any injury caused by wrongful detention of the goods. In such cases, the affected party may sue before courts for an additional compensation. What is considered appropriate compensation and does it include attorney fees or other expenses? The legislation on border measures does not regulate what is considered appropriate compensation. In those cases, the affected party may sue for compensation (including attorney fees or other expenses) under the general rules of liability. II. Proposals for adoption of uniform rules The Groups are invited to put forward proposals for adoption of uniform rules regarding border measures and other measures of customs intervention against infringers. More specifically, the Groups are invited to answer the following questions: 1. Do you think that the adoption of uniform rules and best practice of customs authorities in the area of border measures and better coordination between countries and at an international level are desirable to improve enforcement? 7

8 2. What should the scope of border measures be? Border measures should cover all kinds or import or export regimes. The scope of border measures should be as wide as possible. The possibility to intercept large shipments before they enter the markets, via the collaboration between customs and border surveillance authorities of each country, should be ruled. Do you think that border measures should be available also for goods infringing IP rights for which your national law currently does not provide border measures? If so, which IP rights? The scope of border measures should be as wide as possible covering all relevant IP rights (i.e. appellations of origin, patens). Should unfair competition give rise to border measures? Yes, as long as the trespassed right is clearly identified and provisions are taken to avoid the violation of holder or importer rights of the allegedly infringing goods. Which goods should be excluded by border measures legislation? No goods should be excluded, even those which are donations should be considered. 3. What rules should apply in relation to the lodging and processing of applications for customs action? The simplification of the proceeding for submitting power of attorneys or securities should be ruled, in this last case via the introduction of an undertaking, by which all guarantees should be replaced. Should there be a centralised system for managing multiple applications for customs action through a single contact point? Should there be uniform rules on the provision of information by the applicant? What should the required level of evidence for alleged infringement be? The description of the presumably offending goods should be considered as the minimum required level of evidence. Should there be uniform rules on the provision of information by the customs authorities? Yes 4. What rules should apply in relation to the procedure following notification? 8

9 The immediate inspection of the goods should be ruled in order to reduce the duration of the procedure. Should there be a simplified procedure allowing the destruction of the goods without there being any need to determine whether IP rights have been infringed? No Should there be uniform rules on the examination of the goods by the right holder, security and compensation in the case of wrongful detention of goods and disposal of infringing goods? Yes National Groups are invited to comment on any additional issue concerning border measures and other measures of customs intervention which they find relevant. It will be helpful and appreciated if Groups follow the order of the questions in their Reports and use the questions and numbers for each answer. 9