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Intellectual Property Rights


ROLE OF CUSTOMS IN ENFORCING INTELLECTUAL PROPERTY RIGHTS

February 15, 2023

* Mr. Rajesh T. V.

The existence of Intellectual Property is from time immemorial, the same was identified and witnessed as a ‘property’ in recent times. When it was learnt that Intellectual ‘Property’ could be used commercially, or to make a financial gain, there arose a necessity to treat the same as property.  In addition to financial gain, such ‘property’ enables its creators or inventors, as the case may be, to earn recognition in the society. According to the World Intellectual Property Organisation (WIPO), “Intellectual Property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce”.  In India, there are mainly five laws for the purpose of governing Intellectual Property rights. They are (i) Trade Marks Act, 1999 (ii) Patents Act, 1970, (iii) Copyright Act, 1957, (iv) Designs Act, 2000 and (v) Geographical Indication of Goods (Registration and Protection) Act, 1999. The idea behind drafting the laws to protect Intellectual Property is to ensure that the interests of the creators or inventors are taken care of, while creativity and innovation can be better utilised for society in general.

Intellectual Property rights are considered private rights, vested with anyone falling under the IP legal regime. Thus, any affected party can take up the matter about the infringement of the right with the concerned IP authorities or the judiciary. Therefore, enforcement of these rights, more often than not, is not a priority for the authorities, and resorting to civil remedies alone may not be very effective for the rights holder in bringing the infringement under control.  While this is the situation within the country, the Customs regulations in India takes care of any infringement of Intellectual Property rights that happens across the borders. Customs officers are authorised to seize any property that would infringe the rights of the person, who has registered his right with the jurisdictional Commissioner of Customs in accordance with the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007.

Under the said rules, a right holder is expected to register his rights with the Customs, in the prescribed format, for which a Permanent Registration Number (PRN) is allotted by the department.  Thereafter, if there is any import or export of any goods that would infringe the registered right, such goods would be liable to confiscation under the provisions of Customs Act, if such export/ import happens without the permission of the rights holder. On the practical side, the Customs officers call the rights holder, who would come to the Customs office to confirm the infringement, after which appropriate legal action is initiated.

It was reported during March, 2009, that the Customs, Mumbai had detained a consignment of dual-SIM mobile phones imported by M/s Samsung India Electronics Pvt Ltd, on the ground that the imported goods infringed the patent of similar technology registered with the Customs authorities by a Madurai-based inventor by name Ram Kumar who was granted the patent in 2008 by the patent office in Chennai. The Samsung India Electronics Pvt Ltd filed a Writ Petition (WP) against Customs action before the High Court of Delhi challenging the Customs Act, 1962 and the validity of Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007. However, due to the issue of territorial jurisdiction, Samsung had to withdraw the petition.

In a similar case, Customs, Mumbai had detained a consignment of Mobile phones using laser markings, imported by M/s LG Electronics, on the ground that patent of such technology was registered with Customs by one Bharat Bhogilal Patel. In this case, the Hon’ble High Court of Delhi, on the petition filed by M/s LG Electronics vide CS (OS) No. 2982/2011, decided that the Customs authorities were not authorised to initiate any action in respect of violations pertaining to Patents, Design and Geographical Indications, without a direction from the court, since the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 were implemented in accordance with the Trade-Related Aspects of Intellectual Property Rights (TRIPS) entered into by India with the WTO and the TRIPS agreement did not cover Patents, Design and Geographical Indications.

In this regard, it appears that the Hon’ble Court appears not to have observed the inherent powers of the Customs Act under Section 11(1)(n), to prohibit the import or export of any item, with a view to protecting the patents, trademarks, and copyrights. It may also be observed that the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 was introduced by the Government under the provisions of Sections 156(1), Section 11(2)(n) and Section 11(2)(u) of the Customs Act, which was in existence much before the TRIPS Agreement.

Thus, it may be seen that in an era, wherein Intellectual Property rights are gaining more and more importance, the significance of Customs in enforcing the said rights effectively cannot be undermined, as long as such rights are registered with the jurisdictional Customs authorities under the existing provisions of law, since the best way is to protect such rights is to confiscate the infringing goods, for which Customs is empowered.

References:
  1. What is Intellectual Property? (wipo.int), https://www.wipo.int/about-ip/en/, Visited on 15.04.2020
  2. Mr. Alastair Hirst, Barrister, Edinburgh, United Kingdom, THE ROLE OF THE GOVERNMENT AUTHORITIES IN THE ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS, Document presented during the WIPO Workshop on the Enforcement Of Intellectual Property Rights For Judges organized by the World Intellectual Property Organization (WIPO) in cooperation with the Ministry of Economy and Trade, the Ministry of Justice, the Institute for Judicial Studies and the Arab Society for the Protection of Intellectual Property (ASPIP) Beirut, December 7, 1999.
  3. CH Unnikrishnan, Samsung tests IP-import law link, 12.03.2009, Also, Jaya Mitra, Muskan Kaushik, Harshada Wadkar, Decoding The Relationship Between Customs And Patents, 4 Journal of Legal Studies and Research, (2018).
  4. LG Electronics India Pvt Ltd v Bharat Bhogilal Patel & Others on 13 July 2012, High Court of Delhi.
  5. Vide Notification No. 47/2007-Cus. (N.T.), dated 8-5-2007.
  6. Section 111 and Section 113, in relation to import and export, respectively.
Author:

* Mr. Rajesh T. V.
Ph.D. Research Scholar

Disclaimer: The opinions expressed in the article are the personal opinions of the author. The facts and opinions appearing in the article do not reflect the views of the Alliance Centre for Intellectual Property Rights(ACIPR) and the Centre does not assume any responsibility or liability for the same.