Border Measures: Another Mechanism for Protection of Trademarks

Border Measures: Another Mechanism for Protection of Trademarks

By Germán Marín and Rosa Margarita Santacruz

Decision 486 of 2000 of the Commission of the Andean Community of Nations -norm that rules trademarks in Colombia- in its Article 250 provides that "the owner of a trademark who has valid grounds for suspecting that an operation of import or export of products infringing that right will occur, may request the competent national authority to suspend this customs operation. The conditions and guarantees established in the internal rules of the Member Country are applicable to this request and to the order issued by this authority".

The National Government, honoring its commitments through trade agreements and treaties, issued Decree No. 4540 of 2006 that regulates border measures, being its scope, in relation to trademarks, the one referring to the "import operations, export or transit of merchandise of counterfeited trademarks".

The Decree defines merchandise of counterfeit trademark as follows: "Any merchandise, including packaging, bearing without authorization a trademark identical to the trademark validly registered for such merchandise, or not be distinguished in its essential aspects from that mark, or that is confusingly similar, and that thereby infringes the rights of the holder of the trademark in question".

And given the mentioned fact, it authorized the Colombian customs authorities the possibility to temporarily suspend the importation, exportation or transit of merchandise allegedly of false mark, while the competent authority decides on the existence or not of such circumstances.

The procedure implies that the trademark owner, who in this article is understood as the owner of a trademark registration or, where appropriate, its successors, assignees and exclusive licensees, may request the said suspension to the customs administration, and in case that it is proven that the merchandise constitutes counterfeit trademark, it  shall not proceed the release, or approval of shipment of the goods, or of customs transit, as appropriate.

The request to suspend the customs operation must be made by the owner of the trademark right directly or by his legal representative or attorney. The request should include full identification of the holder of the mark or of the persons that are authorized or licensed to operate the industrial property right, as well as the identification of the trademark right with indication of the registration number, and the identification of the facts constituting the violation of that right. It must indicate the place where genuine merchandise is manufactured, and the complete identification of the manufacturer, accompanied by a detailed description of the genuine merchandise. Also, if possible, a description of the allegedly counterfeit trademark merchandise subject of the request for suspension of customs, and the indication of its location.

Obviously, with the request all documents proving the veracity of the above requirements must be provided, as established by the Decree.

Concerning the right of inspection of the alleged infringing merchandise, the Decree provides two mechanisms: One prior to the filing of the request for suspension of the customs operation, for which a petition is sufficient in this regard along with the documents evidencing the ownership of the trademark and the document certifying the legal standing to raise the request. The second mechanism occurs when the inspection petition is part of the request to suspend the customs operation.

The filing of the request for suspension of the customs operation has the following consequences:

1. The suspension of the storage term and consequently of release, or approval of the shipment, or transit operation, as appropriate.

2. The impossibility of obtaining the direct delivery of the goods, an event in which it will be ordered the transfer thereof to a storage facility. This same measure will be adopted in respect of goods under transit.

The customs administration must decide whether it supports or rejects the request to suspend the customs operation within three (3) days following its submission. If it accepts the request it shall order in the same decision i) the suspension of the customs operation; ii) the provision of a guarantee equivalent to 20% of FOB value of the goods to ensure the eventual damage that may be caused to the importer or exporter, without prejudice to the responsibility of another order; iii) the communication to the storage facility where goods are found about the  suspension of the customs operation; iv) the authorization to the petitioner to examine the merchandise within five (5)days.  This diligence will be served in the presence of the customs authority and the costs shall be borne by the petitioner.

In the case of highly perishable merchandise, and without prejudice of the plaint before the competent authority, there will be no suspension of the customs operation if the alleged infringer so requests and provides a bank or insurance company guarantee, equivalent to one hundred percent (100%) of FOB value of the merchandise, to ensure the damage that may arise from the alleged violation.

In the meantime, the petitioner requesting the customs operation suspension should promote civil claim or criminal complaint for trademark counterfeit before the appropriate judicial authority, which in our case of Colombia is the civil judge of the circuit or the criminal court judge.  Indeed, within ten (10) days after notification of the order admitting the request for the customs operation suspension, the petitioner shall submit to the customs administration the proof to have constituted the warranty and the copy of the claim or complaint with which he initiated the process before the judicial authority.

Non-delivery of these documents and within the term herein provided, shall be deemed as a withdrawal of the request of suspension, in which case the customs operation will continue normally.

When the decision of the civil or of the criminal judge  in the process initiated for the purpose, declares the counterfeit of the trademark, the customs authority shall refuse the release,  the authorization of shipment or transit of merchandise, which will be available to the competent authority for subsequent destruction.

When the judge decides that there is no false trademark, the terms shall be reverted and the customs operation will continue normally.  In this case, customs shall order to make effective the guarantee in favor of the affected, to whom the original must be delivered, in the event that the judge would have not ordered such delivery within the process.

While the competent authority decides on the merits, the merchandise will remain trapped in the storage facility or zone available to customs. The costs will be borne by the customs user.

Finally, the Decree, with the aim of guaranteeing the rights of trademark owners and prevent entry to the country of merchandise with counterfeit trademarks, regulates the so called Trademark Owners Directory, which is a record by which the trademark owners inform the customs authority the existence of their trademarks, the product features, the persons that are entitled to commercialize them in the country, as well as information about the lawyer or person to be contacted in those events of possible infringements of trademark rights.

Customs administration has wanted to participate actively against the importation, exportation or transit of counterfeit trademark merchandise. In that sense it has trained its staff in relation to trademark law, and punctually in the study of false trademark recognition. However, in this sense, it has requested cooperation from trademark owners in order to enroll themselves in the Trademark Owners Directory of that entity and provide training to the customs staff in order to facilitate their work of identifying merchandise bearing false trademarks.

No doubt a healthy trade with authentic trademarks will grow the confidence of consumers, for whom trademarks exist.  National authorities are aware of this need, and in pursuit of the market transparency it has regulated as indicated above the border measures.

Germán Marín, attorney from Universidad Externado de Colombia, specialized in Law of Procedure (U. Externado de Colombia), and with long experience in Industrial Property Law, Commercial, Administrative and Civil and Commercial law, as well as in Arbitral Procedures; professor of prestigious universities in Colombia in the areas of Commercial Law, Industrial Property, and Arbitration, and who worked until this year and for over twenty (20) years in the law firm Cavelier Abogados, of which seventeen (17) he performed as a partner of the firm and as Head of the Litigation Department.

Rosa Margarita Santacruz, attorney from Universidad del Rosario, specialized in Financial Law (U. del Rosario)  and in Integration in the International System (U. Javeriana),  and with  long experience in Industrial Property Law especially in Trademarks as for her over fifteen (15)  years working in the law firm Cavelier Abogados, in which she performed during the last three (3) years as Head of the Trademark Department.