Thursday June 25th 2009, by Piers Strickland
It has been reported by the IPKat that HM Revenue & Customs (“UK Customs”) has significantly departed from previous practice. UK Customs was previously prepared to detain allegedly infringing goods upon receipt of a witness statement from the intellectual property rights holder alleging infringement. Now, UK Customs is requiring intellectual property infringement proceedings to be issued.
UK Customs’ made the following statement:
“Our [previous] practice has been to seize these items accepting a witness statement from the right holder as confirmation that the goods are infringing and therefore liable to forfeiture. Should the owner disagree with this determination they have the right to challenge this through judicial proceedings.
We now accept that the burden of proof should be upon the right holder who must confirm the infringing nature of the goods by taking legal proceedings. More pertinently any proceedings must ordinarily be instituted within ten working days but no later than twenty working days after notification of detention. Right holders must therefore be prepared to institute proceedings within the time period set out in the Regulation. Goods will be seized only if the right holder gains a successful judgment and we are directed by the court to seize the items in question.“
UK Customs has defended these changes on the basis that they are needed to comply with Article 13 of Article 13 of Council Regulation 1383/2003, which has been implemented into the UK via SI 2004 No. 1473.
This is a blow for intellectual property rights holders, as UK Customs had been a very effective (and cheap!) way of acting against infringements coming into the UK.
However, no doubt some rights holders may have been over-using UK Customs in this respect. This may be another reason why UK Customs felt that the balance needed redressing by putting the burden of proof on the intellectual property rights holders.
The new regime may well impose a significant costs burden onto intellectual property rights holders. Issuing court proceedings for each infringement will certainly be an expensive business. Also, while some intellectual property infringements will be quite straightforward, others, such as those involving parallel / grey imports, may be legally much more uncertain. Therefore, intellectual property rights holders may even be forced to issue proceedings on weak / uncertain grounds, which is a recipe for even more expensive potential litigation.
In a time of recession and continuing problems with counterfeit goods, this news has probably gone down with intellectual property rights holders about as well as a cup of cold sick. Nice.
Mind you, HM Customs may end up saving some money, which might go some way to repaying the Government’s £Gazillions of debt. Some good news for Gordon, at last.
