Part 14IMPORTATION OF GOODS INFRINGING AUSTRALIAN TRADE MARKS

PART 14—IMPORTATION OF GOODS INFRINGING AUSTRALIAN TRADE MARKS 140. The object of this Part is to protect registered trade marks by making provision allowing the Comptroller to seize and deal with goods that are imported into Australia if the importation infringes, or appears to infringe, a registered trade mark. Notice of objection to importation 141.(1) The registered owner of a registered trade mark may, in accordance with the regulations, give to the Comptroller a notice in writing objecting to any importation of goods that infringes the trade mark. The notice is to be given together with any prescribed document. (a) the registered owner of the registered trade mark has not given a notice under subsection (1); or (b) any notice given under subsection (1) is no longer in force; a registered user of the trade mark may, subject to any agreement between the user and the registered owner, ask the registered owner to give such a notice in respect of the trade mark. (3) If the registered owner does not comply with the request within the prescribed period, the registered user may, subject again to the agreement, give the notice to the Comptroller. (4) A notice given by the registered owner of a trade mark remains in force for 2 years unless it is revoked before the end of that period by notice in writing given to the Comptroller by that registered owner or a subsequent registered owner of the trade mark. (5) A notice given by a registered user of the trade mark remains in force for 2 years unless it is revoked before the end of that period by notice in writing given to the Comptroller: (a) it the registered user is authorised under the agreement referred to in subsection (2) to revoke the notice—by the registered user; or (b) in any other case—by the registered owner of the trade mark. Comptroller may seize goods infringing trade mark 142.(1) This section applies to goods manufactured outside Australia that: (a) are imported into Australia; and (b) are subject to the control of the Customs within the meaning of the Customs Act 1901. (2) If goods to which this section applies: (a) have applied to them a sign that, in the opinion of the Comptroller, is substantially identical with, or deceptively similar to, a notified trade mark; and (b) are goods in respect of which the notified trade mark is registered; the Comptroller must seize the goods unless he or she is satisfied that there are no reasonable grounds for believing that the notified trade mark is infringed by the importation of the goods. (3) The Comptroller may decide not to seize the goods If he or she has not been given by the objector, or by one or more of the objectors, security in an amount that he or she considers sufficient to repay to the Commonwealth the expense that may be incurred by the Commonwealth if the goods were seized. (4) Goods seized under this section must be kept in a secure place as directed by the Comptroller. Notice of seizure 143. The Comptroller must, as soon as practicable: (a) give (either personally or by post) to the designated owner of any seized goods a notice in writing identifying the goods and stating that they have been seized under section 142; and (b) give (either personally or by post) to the objector, or to each objector, a notice in writing: (i) identifying the goods and stating that they have been seized under section 142; and (ii) stating that the goods will be released to their owner unless the objector or one of the objectors (as the case requires) brings an action for infringement of the notified trade mark in respect of the goods, and gives to the Comptroller notice in writing of the action, within the period of 10 working days after he or she has been given the notice or, if the Comptroller extends that period under subsection 146(1), within the extended period. Forfeiture of goods 144.(1) The designated owner of any seized goods may, at any time before an objector starts an action for infringement of a notified trade mark in respect of the goods, consent to the goods being forfeited to the Commonwealth by giving notice in writing to that effect to the Comptroller. (2) if the designated owner gives such a notice, the goods are forfeited to the Commonwealth. Release of goods to owner—no action for infringement 145.(1) The Comptroller must release the seized goods to their designated owner if, within the action period, the objector has not, or none of the objectors has: (a) brought an action for infringement of the notified trade mark in respect of the goods; and (b) given to the Comptroller notice in writing of the action. (2) The Comptroller must also release the seized goods to their designated owner if: (a) before the end of the action period, the objector or each of the objectors has, by notice in writing to the Comptroller, consented to the release of the goods; and (b) at that time: (i) the objector has not, or none of the objectors has, brought an action for infringement of the notified trade mark in respect of the goods; or (ii) any action brought by an objector has been withdrawn. (3) The Comptroller may release the seized goods to their designated owner at any time before the end of the action period if: (a) the Comptroller, having regard to information that has come to his or her knowledge after the goods were seized, is satisfied that there are no reasonable grounds for believing that the notified trade mark has been infringed by the importation of the goods; and (b) the objector has not, or none of the objectors has, brought an action for infringement of the notified trade mark in respect of the goods. (4) In this section: “action period”, in relation to seized goods, means: (a) if there is only one objector to the importation of the goods—the period within which the objector may bring an action for infringement of the registered trade mark in respect of goods under subsection 146(1); or (b) if there is more than one objector to the importation of the goods—the period beginning on the earliest day on which an objector may bring an action for infringement of the registered trade mark in respect of the goods under subsection 146(1) and ending at the end of the last day on which an objector may bring such an action under subsection 146(1). Action for infringement of trade mark 146.(1) An objector may bring an action for infringement of a notified trade mark in respect of seized goods and give notice of it to the Comptroller: (a) if paragraph (b) does not apply—within the period (“notified period”) of 10 working days specified in the notice given to the objector in respect of the goods under section 143; or (b) if: (i) the objector has, before the end of the notified period, applied in writing to the Comptroller for an extension of the notified period; and (ii) the Comptroller, being satisfied that in the circumstances of the case it is fair and reasonable to do so, has extended the notified period for a number of working days not exceeding 10; within that period as so extended by the Comptroller. (2) The court hearing the action: (a) may, on the application of a person, allow the person to be joined as a defendant to the action; and (b) must allow the Comptroller to appear and be heard. (3) In addition to any relief that the court may grant apart from this section, the court may: (a) at any time, if it thinks it just, order that the seized goods be released to their designated owner subject to the conditions (if any) that the court considers fit to impose; or (b) order that the seized goods be forfeited to the Commonwealth. (4) If: (a) the court decides that the trade mark was not infringed by the importation of the seized goods; and (b) the designated owner of the goods, or any other defendant, satisfies the court that he or she has suffered loss or damage because the goods were seized; the court may order the objector to pay to the designated owner or other defendant compensation, in the amount determined by the court, for any part of that loss or damage that is attributable to any period beginning on or after the day on which the action was brought. (5) If, after 3 weeks front the day on which the action was brought, there is not in force at any time an order of the court preventing the goods from being released, the Comptroller must release the goods to their owner. (6) If the court orders that the goods be released, the Comptroller must, subject to section 149, comply with the order. Action for infringement by registered user 147. If a registered user of a notified trade mark is an objector in relation to any seized goods, subsection 116(1) does not prevent the registered user from starting an action for the infringement of the trade mark in respect of the goods within the required period. Forfeited goods—how to be disposed of 148. If: (a) goods are forfeited to the Commonwealth under section 144; or (b) the court orders under section 146 that goods be forfeited to the Commonwealth; the goods are to be disposed of: (c) in accordance with the regulations; or (d) if no regulations are in force—as the Comptroller directs. Power of Comptroller to retain control of goods 149. In spite of this Part, the Comptroller: (a) must not release, or dispose of, any seized goods; or (b) must not take any action in relation to the goods to give effect to any order of a court under section 146; if the Comptroller is required or allowed to retain control of the goods under any other law of the Commonwealth. Insufficient security 150. If security given under subsection 142(3) by the objector or objectors who gave notice under section 141 in respect of a trade mark is not sufficient to meet the expenses incurred by the Commonwealth as a result of the action taken by the Comptroller under this Part because of the notice, the amount of the difference between those expenses and the amount of security: (a) is a debt due by the objector, or by the objectors jointly or each of them separately, to the Commonwealth; and (b) may be recovered by an action taken in a court of competent jurisdiction. Commonwealth not liable for loss etc. suffered because of seizure 151. The Commonwealth is not liable for any loss or damage suffered by a person: (a) because the Comptroller seized, or failed to seize, goods under this Part” or (b) because of the release of any seized goods. Power to require information 152.(1) If: (a) goods that may be seized under this Part are imported into Australia; and (b) the Comptroller, relying on information received, is satisfied that the use of a trade mark applied to those goods is fraudulent; the Comptroller may ask the importer of the goods or an agent of the importer: (c) to produce any document in his or her possession relating to the goods; and (d) to give information about: (i) the name and address of the person by whom the goods were consigned to Australia; and (ii) the name and address of the person in Australia to whom the goods were consigned. (2) The importer or his or her agent must comply with the request within the prescribed period. Penalty: Imprisonment for 6 months. Note: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914), (3) The Comptroller may give any information obtained under this section, or from any other source, to any objector in relation to the goods. Modification in relation to Norfolk Island etc. 153. The regulations may provide for the modification or adaptation of this Part in its application to: (a) Norfolk Island; or (b) Christmas Island; or (c) Cocos (Keeling) Islands.