In the context of emerging economic order, the need to introduce a legal system to adopt Intellectual Property Rights (IPR) has been a timely demand. Despite having specific and separate laws for the protection of IPR, Intellectual Property (IP) right holders have suffered from inadequate legislative focus on the process of import-export of counterfeited or false descripted products.
To supplement the growing significance of IPR protection, on 19 November 2019, the National Board of Revenue (NBR) has enforced the Intellectual Property Enforcement (Import & Export) Rules 2019 with immediate effect. The Customs wing of the NBR is now authorised to confiscate and/or destroy any IPR infringed products, goods or shipments. If any product is manufactured, produced, reproduced, assembled, marketed or used in any other means by violating the existing IP laws of Bangladesh or abroad, and without the permission of the IP right holder or his/her authorised person, then such product will be treated as an IPR-infringed product. Therefore, an IP right holder can take the benefit of new IPR enforcement regime against counterfeited or false descripted or even genuine products.
To avail the benefit, the IP right holder must file and register a notice to the concerned Customs House or Customs Station or Customs Port on a prescribed form. The IP right holder may also file such objection notice with specific information i.e. some infringed IP products have already been imported or have been presented for exporting, or with apprehension of such import or export.
Any such objection notice requires to be registered by the Customs authority to initiate the legal process and as a result, registration will not be given unless the IP right holder provides some necessary documents along with the notice. The Customs authority may ask the right holder to provide necessary documents within the next 15 working days of receipt of the notice, which can be extended to a further period of 7 working days. The IP right holder is required to provide - (a) his full name, address, email and telephone number; (b) if he is represented by any person, copy of the "Letter of Authority"; (c) proof of ownership or title i.e. Registration Certificate, Dealership Agreement, Deed of Assignment etc.; (d) date of commencement and expiry of IP rights; (e) skeleton of statements supporting the notice for staying release of the products; (f) for specific shipment-details of the shipment; (g) details of the IP right holders original goods along with HS code, sample and clear pictures; (h) name of the concerned Customs House or Customs Station or Customs Port; (i) money receipt of submission of Notice filing fee of Tk. 5000. Upon receipt of the documents, the Commissioner of Customs will notify, within the next 30 working days, the applicant, the decision as to whether the notice is registered or rejected. Once the notice is registered, it will be valid for one year and the Customs authority will require the applicant to execute and furnish sufficient security bond against the customs authority's liability in causing any loss or damages to the importer/exporter/owner/recipient of the products by confiscating or staying release of the product in case the notice is not disposed of in favour of the applicant or the alleged IP right holder.
The Customs Commissioner or duly authorised officer may stay the release of any objected product at its own will or on the basis of IP right holder's objection notice, if he is satisfied that IPR has been infringed by any importer/exporter. However, if the authority stays the release by its own will, it will ask the IP right holder to submit necessary documents within the next 10 working days (3 working days for perishable goods), which can further be extended for another 4 working days.
Parties may be allowed to inspect the shipment, collect sample or any necessary information, but subject to the condition of maintaining confidentiality or business secrets. Parties may seek for any necessary information under the Right to Information Act, 2009.
After inspecting all the documents, the Customs authority will determine whether IPR has been infringed. Any such objection notice may be disposed of ordering destruction of the products if it is proved that IPR has been violated. However, no such product will be destroyed if there is any case pending on this subject matter. On the other hand, if the Customs authority finds no IPR infringement, it will provide release certificate within the next 24 hours and in such a case, the applicant may be held to pay for any loss or damages, to the importer/exporter/owner of the goods, incurred due to the disposal of the objection notice.
One significant characteristic of this Intellectual Property Enforcement (Import & Export) Rules 2019 is that it operates territorially with a global effect. This newly introduced IPR protection mechanism has the potential of helping IP right holders in preserving, maintaining and accelerating their cross-border business outputs.
The writer is Advocate, Supreme Court of Bangladesh.