Q208: Border measures and other Means of Customs Intervention against Infringers

Transcription

1 Group Report for Singapore Q208: Border measures and other Means of Customs Intervention against Infringers Questions I. Analysis of current law and case law 1. Do the laws of your country provide for border measures? If so, what is the legal basis? Yes. Border enforcement measures are provided for in Sections 81 to 100 of the Singapore Trade Marks Act 1998, as well as in the Trade Marks (Border Enforcement Measures) Rules Copyright: Border enforcement measures are provided for in Sections 140A to 140L (border enforcement measures) and Sections 140M to 141 (search powers) of the Copyright Act. In addition, Section 140LA, which was inserted into the Copyright Act via the Copyright (Amendment) Act 2004, and came into force with effect from 1 January 2005, allows custom authorities to take ex-officio action to detain the following goods: Good which are imported into, or which are to be export from, Singapore; and Good which are in transit, where these goods are consigned to any person with a commercial or physical presence. 2. Do the laws of your country provide for other measures of customs intervention against infringers? If so, which ones and what is the legal basis? Yes. For example, under Regulation 3 of the Regulation of Imports and Exports Regulations, any party who wishes to import replication and mastering equipment for manufacture of optical discs must obtain a permit from the Director-General of Singapore Customs to do so. Any party who imports without a permit shall be guilty of an offence. To deter false declarations of trade descriptions of goods by persons who wish to avoid obtaining a licence to import replication and mastering equipment for optical discs, Section 28A of the Regulation of Imports and Exports Act provides that any person who imports, exports or transships any goods and (a) applies or causes to be applied to such goods an incorrect trade description; or (b) has in his possession for sale or for any purpose of trade any such goods to which an incorrect trade description has been applied, shall be guilty of an offence. In addition, other measures such as Anton Piller orders and Mareva injuctions are also available if the requisite conditions are met. Under section 4 of the Consumer Protection (Trade Description and Safety Requirements) Act, it states that any person who in the course of a trade or business, (a) applies a false trade description to any goods or (b) supplies any goods to which a false trade description is applied, shall be guilty of an offence. Section 5(a) of the said Act defines false trade description as follows: False trade descriptions. 5. For the purposes of this Part (a) a false trade description means a trade description which by reason of anything contained therein or omitted therefrom is false or likely to mislead in a material respect as regards the goods to which it is applied or in connection with which

2 it is used, and includes every alteration of a trade description whether by way of addition, effacement or otherwise which makes the description false or likely to mislead in a material respect; and In addition, section 8 of the Act also refers false trade description with regards to Trade Marks. 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? If so, for which types of IP rights are border measures available? 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? Does unfair competition, passing off or the like give rise to border measures? Currently, statutory border enforcement measures for IP rights are only provided for in the Copyright Act and the Trade Marks Act. There are no specific provisions for other IP rights such as patents, plant variety rights, common law marks, registered and unregistered design rights, layout-designs of integrated circuits. For Copyright, neither an actual registration nor application for the copyright is required. For Trade Marks, rights accrue to the registered proprietor as from the date of the application for registration, but he may only commence infringement proceedings only from the date on which the trade mark is in fact registered. Unfair competition, passing off or the like does not give rise to border measures. 4. Are border measures available for parallel imported goods? Are border measures available for goods contained in a traveller s private luggage? Are there any other goods excluded by your border measures legislation? Border enforcement measures are not available for parallel imports. Border enforcement measures are available for goods contained in a traveller s private luggage see Section 97 of the Trade Marks Act 1999 and Section 140P of the Copyright Act. There are no excluded goods. 5. Who is entitled to file an application for customs action? Is there a centralised system for managing multiple applications for customs action through a single contact point? What are the conditions for border measures? In particular, what level of evidence for alleged infringement and other information is required by customs authorities regarding the application for customs action? To which extent are customs authorities willing to receive training by the right holder? Do customs authorities generally require the provision of a security to protect the owner, holder or importer of the allegedly infringing goods? If so, will such security depend on the type of IP rights? May the customs authorities take ex officio measures? If so, what is the practical relevance of ex officio action in your country? Are customs authorities liable in case of wrongful ex officio detention? These following provisions are to the Consumer Protection (Trade Descriptions And Safety Requirements) Act Section 22 provides that the power of Director to require goods for testing or analysis and furnishing of information.

3 Section 23 grants the Director or an officer authorized by him, the power to enter premises and inspect and seize goods and documents. Section 28 protects persons from liability in case of wrongful ex officio action if the act was done in honest belief that his duty under the Act required or entitled him to do it. Trade Mark Only the proprietor or licensee of the registered trade mark is entitled to file an application for customs action. Since each application must be made by way of a written notice to the Director- General of the Customs and Excise Department, there is a single contact point and a centralised system for managing multiple applications. The conditions for border measures for Trade mark are implied, since the written notice must state that: - the person giving the notice is the proprietor of a registered trade mark or a licensee thereof having the power to give such a notice; - at a time and place specified in the notice, good which, in relation to the registered trade mark, are infringing goods are expected to be imported for the purposes of trade; and - he objects to such importation. The notice of objection must be accompanied by: - a statutory declaration that the particulars in the notice of objection are true; - a copy of the certificate of registration issued by the Registrar in relation to the registered trade mark specified in the notice of objection; - evidence that the registration of the registered trade mark was duly renewed at all times (e.g. the certificate of renewal); - where the notice of objection is given by a person as agent for the proprietor or licensee, evidence of the authority of the person; and - a fee of SGD 200. The notice must be served during the business hours of the office of the Singapore Customs, and at such time as is reasonably possible for an authorized officer to take any action in relation to the notice. The notice will remain in force for 60 days commencing on the day on which the notice was given. Upon receipt of the notice, if the notice has not lapsed or been revoked, and a person imports the goods, not being goods in transit, which bear a sign that, or whose packaging bears a sign that, in the opinion of an authorized officer, is identical with or similar to the registered trade mark in question, then the authorized officer may seize the goods. Copyright The owner or licensee of the copyright in the copyright material is entitled to file an application for customs action. In addition, a performer of a performance embodied in an unauthorized recording is entitled to the same. Since each application must be made by way of a written notice to the Director-General of the Customs and Excise Department, there is a single contact point and a centralized system for managing multiple applications.

4 The conditions for border measures of Copyright are implied, since the written notice must establish: - the subsistence of copyright in the copyright material; - the ownership of that copyright; - that goods to be seized, or which have been seized, are copies of the copyright material to which section 140B of the Act applies; - where the notice was given by a person as agent for the owner or licensee of the copyright, the authority of the person giving the notice. The notice of objection must be accompanied by: - a statutory declaration that the particulars in the notice are correct; and - a fee of SGD 200. The notice must be served during the business hours of the office of the Singapore Customs, and at such time as is reasonably possible for an authorized officer to take any action in relation to the notice. The notice will remain in force for 60 days commencing on the day on which the notice was given, or the end of the period for which the copyright subsists, whichever is earlier. If the notice has been given, it has not lapsed or been revoked, and a person imports copies of the copyright material for any one of the purposes in Section 140B(7) of the Copyright Act (listed below), an authorized officer may seize the copies. Selling, letting for hire, or by way of trade offering or exposing for sale or hire, the copies; Distributing the copies for the purpose of trade; Distributing the copies for any other purpose to an extent that will affect prejudicially the owner of the copyright; or By way of trade exhibiting the copies in public. There are no specific guidelines concerning training of customs authorities. Provision of a security is generally required. Section 83 of the Trade Marks Act and 140C of the Copyright Act provides that an authorised officer may refuse to seize the goods unless the objector has either given security, or deposited a sum of money that, in the opinion of the Director-General, is sufficient to (i) reimburse the Government for any liability or expense it is likely to incur as a result of the seizure, and (ii) pay such compensation as may be ordered by the Court. The customs authorities are able to take ex officio measures, for example in seizing allegedly infringing goods specified in the written notice; or where they have a reasonable suspicion, in boarding a vessel, train, vehicle or aircraft in Singapore to rummage and search the conveyance for infringing goods, even if there is no written notice given by a registered trade mark proprietor or licensee. Customs authorities also have the power to examine, search and detain any goods, package, box, chest or other article which is being or has recently been imported and in regard to which a reasonable suspicion exists that it is or that it contains infringing goods. Further, any person entering Singapore may have his person and baggage searched by customs authorities. Customs authorities may also, without warrant, enter any islet, landing place, wharf, dock, railway, quay, port or airport facilities, for the purposes of exercising the powers of search or examination. Practical relevance of ex officio action:

5 On 29 November 2006, customs officers conducted a joint inspection with a rights owner representative on an import container of oil filters for possible infringement of IP rights. After it was assessed that 59,500 oil filters were counterfeits, the officers handed the detained container over to the police for further action. On 8 November 2005, acting on a tip-off, customs officers uncovered almost 8,000 pairs of sports shoes which had infringed registered trademarks. The local consignee and the rights owner reached an out-of-court settlement. On 28 November 2000, 15,000 pieces of pirated Anti-Virus CD-ROMS, worth a market value of about $990,000, were found in a consignment said to contain Computer parts blank discs produced at the border for Customs clearance. This case was subsequently handed over to the Criminal Investigation Department for investigation. (source: Singapore Customs annual reports) The customs authorities have immunity against any legal action or proceedings for anything which is in good faith done or omitted to be done in the exercise of any power, duty or function under border enforcement measures. 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? No 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? 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? Section 25 of the Consumer Protection (Trade Descriptions And Safety Requirements) Act only states that the Director shall inform the person from whom the goods have been seized and there is no mention about the owner or right-holder of the goods. As soon as practicable after the allegedly infringing goods are detained, the Director-General will notify both the right-holder and also the importer of the goods. These infringing copies will be held for 48 hours. 8. What happens after notification? Briefly describe the procedure following notification. Is the inspection of the allegedly infringing goods following notification usually carried out by the right holder or by an expert? 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? If so, in which cases? Are samples of the goods preserved 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? What are the advantages and disadvantages of the respective proceedings? What is the impact of a nullity action seeking to invalidate IP rights on the application for customs action? May customs authorities release goods suspected of infringing IP rights on provision of a security by the owner, holder or importer of such goods? If so, will such release depend on the type of IP rights?

6 After notification, the goods will be released to the importer unless an infringement action in respect of the seized goods is instituted by the right holder within ten working days from the day specified in the notice, and the right holder informs the Director-General accordingly. Both the right holder and the importer may be permitted by the Director-General to inspect the goods. There is no simplified procedure for destruction of goods without determination of infringement. Both civil and criminal proceedings are available to determine infringement. Civil: this is of course much more expensive. But the plaintiff will have control of the proceedings and how they wish to move forward. Criminal: this is cheaper. The proceedings are in the hands of the Public Prosecutor, and the may not gel with the commercial intentions of the IPR owner. There is no avenue for customs authorities to release allegedly infringing goods upon provision of a security by the importer. 9. If goods are found to infringe IP rights, may a right holder oppose - exportation of infringing goods from your country; - infringing goods in transit; - placement of infringing goods in a free trade zone or free trade warehouse? In the case of goods that are to be exported from Singapore or are in transit with a local consignee in Singapore, the copyright owner has 10 working days to institute an action for copyright infringement in Court and serve on the Director-General of Customs a court order authorizing further detention of the copies, if he first places a security within 48 hours of the Director-General of Custom's notification. With regards to infringing goods in transit, the custom authority may examine goods if it reasonably suspects that these goods are in transit are counterfeit goods. However, there is no power to detain these goods even if the custom examination results reveal that they are indeed counterfeit goods (Article of the U.S.-Singapore Free Trade Agreement). 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)? 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? Response is as of question 8 above, where section 26 of the Act provides that the action in relation the seized goods is at the discretion of the Minister. Again, section 26(7) provides a direction of disposal in relation to goods which are perishable, involves unreasonable expense or are inconvenient. Upon discovery of infringing goods, customs authorities have the power to detain said goods. Upon detention, the Director-General of Singapore Customs shall notify the copyright owner and the importer/exporter/consignee, and hold the infringing copies for 48 hours. If no further action is taken by the copyright owner, the detained copies will be released to the importer/exporter/consignee.

7 It appears that customs and judicial authorities do not have the power to order the infringer to give the names of his accomplices. 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? What is considered appropriate compensation and does it include attorney fees or other expenses? Section 140I(7) of the Copyright Act provides:- If- (a) the action is dismissed or discontinued, or the court decided that the relevant copyright was not infringed by the importation of the seized copies; and (b) a defendant to the infringement action satisfies the court that he has suffered loss or damage as a result of the seizure of the copies, The court may order the objector to pay compensation in such amount as the court thinks fit to that defendant. As such, judicial authorities may order the applicant to pay the owner, holder or importer of goods appropriate compensation for any injury caused by wrongful detention. The appropriate compensation would be assessed by the judicial authorities, taking into account the loss or damage suffered as a result of the wrongful detention. This does not include attorney fees or other expenses. Section 89 (Trade Marks Act) provides: Compensation for failure to take action 89. (1) Where goods have been seized pursuant to a notice given under section 82 and the objector concerned fails to take infringement action within the retention period for the goods, a person aggrieved by such seizure may apply to the Court for an order of compensation against the objector. (2) Where the Court is satisfied that the applicant had suffered loss or damage as a result of the seizure of the goods, the Court may order the objector to pay compensation in such amount as the Court thinks fit to the applicant. 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? (answer) Yes. Ideally, minimum standards should be set so that there are no safe haven countries through which infringers may choose to move their goods. 2. What should the scope of border measures be? Do you think that border measures should be available also for goods infringing IP rights for which your national law currently does not provide

8 border measures? If so, which IP rights? Should unfair competition give rise to border measures? Which goods should be excluded by border measures legislation? (answer) The border officials are generally not in a good position to accurately assess goods that may infringe patent rights, plant variety rights, common law marks, unregistered design rights, geographic indications. However, this may be possible in the case of design infringement where it is a counterfeit-type situation. 3. What rules should apply in relation to the lodging and processing of applications for customs action? 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? Should there be uniform rules on the provision of information by the customs authorities? (answer) Yes, ideally simplified measures would help IPR owners use the customs actions more effectively. uniform rules on disclosure and evidence may be difficult if we are dealing with different types of rights and different evidentiary requirements. 4. What rules should apply in relation to the procedure following notification? 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? 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? (answer) Yes, ideally simplified measures would help IPR owners use the customs actions more effectively. This ought to be balanced against the need to guard against abuse since this would be an active interference in commercial trade. Adequate compensation ought to be provided in cases where goods are wrongfully detained. National Groups are invited to comment on any additional issue concerning border measures and other measures of customs intervention which they find relevant. Summary Singapore does have border enforcement measures in place for copyright and trade mark infringement matters. There is no border enforcement measure available for other IPR infringement matters such as infringement of patent rights, plant variety rights, common law marks, unregistered design rights, geographic indications. The feeling is that it would be difficult to add these to the list of IPRs that may be subject to border enforcement measures since it would be difficult for customs official to be able to police this. They do not have the expertise to make decisions on patent infringement issues, common law rights and such rights. Much of these have to be decided in court, and sometimes with expert evidence. One possibility perhaps is design infringement but only in the form of counterfeit type situation where the copying is very clear. There are rules in place already regarding disclosure of information and evidence in the application of customs action. By and large- these actions are all coordinated through the Director-General of the Customs and Excise Department so there is a common contact point in place already. There are already rules in place that weigh up the competing interests of

9 commercial trade and IPR protection and the situations of wrongful detention or when the objector to the importation of the goods, fails to take action after the seizure.