Legal provisions - CBEC's Customs Manual 2023 - Customs

2. Legal provisions: 2.1 Copyright Act, 1957, the Trade Marks Act, 1999, the Designs Act, 2000 and the Geographical Indications of Goods (Registration and Protection) Act, 1999 have provisions prohibiting import of goods infringing Intellectual Property Rights under the respective Acts. 2.2 Central Government has been empowered under Section 11 of the Customs Act, 1962 to issue notifications for prohibiting either absolutely or subject to such conditions as may be specified in the notification, the import or export of goods of any specified description. Section 11(2) of the said Act details the purpose for which such a notification may be issued by the Central Government which, inter-alia, covers the following purpose: (i) Protection of patents, trademarks and copyrights. [Section 11(2)(n)]; and (ii) Prevention of the contravention of any law for the time being in force [Section 11(2)(u)]. 2.3 Notification No. 51/2010-Customs (N.T.) dated 30.06.2010 as amended vide Notification No. 57/2018-Customs (N.T.) dated 22.06.2018 prohibits import of goods infringing specified provisions of Trade Marks Act, Copyright Act, Designs Act, and Geographical Indications Act subject to following the procedure prescribed under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 (IPR Rules) issued under Notification No. 47/ 2007-Customs (N.T.) dated 08.05.2007 as amended vide notification No. 56/2018-Customs (N.T.) dated 22.06.2018. Goods in transit through India are excluded from its coverage and only goods intended for sale or use in India would be covered under the notification. 2.4 The prohibition of imported goods for the purpose of protecting intellectual property rights as specified under Notification No.51/2010-Customs (N.T.) dated 30.06.2010, does not relate to all infringements under the parent IPR Acts but only to those imports that infringe the specific provisions of various parent Acts governing IPR, mentioned in the notification No. 51/2010-Customs (N.T.) dated 30.06.2010 as amended vide Notification No. 57/2018-Customs (N.T.) dated 22.06.2018. To illustrate, in case of the Trade Marks Act, 1999, prohibitions against infringement of trade marks on import of goods intended for sale or use in India, that attract the provisions IPR (Imported Goods) Enforcement Rules, 2007 would apply to: (i) Imported goods having applied thereto a false trade mark, as specified in section 102 of the Trade Marks Act, 1999; and (ii) Imported goods having applied thereto any false trade description with the meaning of definition provided in clause (i), in relation to any of the matters connected to description, statement or other indication direct or indirect of the product but not including those specified sub- clauses (ii) and (iii) of clause (za), of sub-section (1) of Section 2 of the Trade Marks Act, 1999. 2.5 In this context, the issue of permitting import of original/genuine products (not counterfeit or pirated) which are sold/ acquired legally abroad and imported into the country, by persons other than the intellectual property right holder without permission/ authorisation of the IPR holder, known in the trade as parallel imports has been clarified by the Department of Industrial Policy and Promotion (DIP P), Ministry of Commerce Industries, which is nodal authority for all matters relating to (i) Trade Marks Act, 1999 and (ii) Designs Act, 2000. CBIC s circular No. 13/2012-Customs dated 08.05.2012 may please be referred. 2.6 The Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 provide a procedure to be followed by the right holders and Customs officers to prohibit importation of goods infringing Intellectual Property Rights and the action to be taken, by the right holders and Customs Officers, after suspension of release of the infringing goods. These Rules provide for, inter alia: (i) Notice to be given by a right holder in writing to the Commissioner of Customs or any Customs Officer authorised by Commissioner requesting for suspension of release of imported goods suspected to be infringing intellectual property rights; (ii) Notice to be accompanied by fees of Rs.2,000/-; (iii) Within 15 days or extended period additional information to be supplied by the right holder to Deputy/Assistant Commissioner, if missing from the format; (iv) Right holder to inform Customs, when his IPR ceases to be valid; (v) Time limit for right holders to join proceedings; (vi) A single point for registration of the right holder; (vii) Adequate protection to the rightful importer and for indemnifying Customs; (viii) Suo-moto action by Customs; (ix) Disposal of the confiscated goods; and (x) Goods of non-commercial nature contained in personal baggage or sent in small consignments meant for personal use would not attract prohibition.