Is Custom Recordal of Intellectual Property Rights (IPRs) available in Malawi?
Is Custom Recordal of IPRs compulsory in Malawi?
Is it an effective measure to stop the infiltration of illegal and counterfeit products in Malawi?
Which law forms the legal basis for Custom Recordal of IPRs (Border Control Measures) in Malawi?
The Trade Marks Act, 2018 (section 55) - forms the legal basis for Custom Recordal of IPRs (Border Control Measures) in Malawi.
Is Custom Recordal of IPRs effective on import or export of goods or both?
Custom Recordal of IPRs is effective only on the import of goods.
What is the role of the customs department/authority? (Kindly give 2-3 points)
Is there a procedure to record IP with the customs department/authority? If yes, then kindly explain it in brief.
An owner or licensee of a registered trademark may give notice in writing to the Commissioner General that he is the owner or a licensee of a registered trademark. On receipt of the notice, the Commissioner General shall take all necessary steps to ensure that the imported goods, materials, or articles do not infringe upon the registered trademark.
What documents are to be submitted along with the application for Custom Recordal of IPRs?
The documents to be submitted are as follows:
Furnish sufficient information and particulars of a trademark;
Pay such fees in respect of the notice as may be specified by the rules; and
The owner or licensee should specify the time and the place where the infringing goods, materials, or articles are expected to arrive in Malawi in addition to the other documents as may be required by the Commissioner General.
Is the applicant required to execute a bond (against all liabilities and to bear the costs towards destruction, demurrage, and detention charges incurred till the time of destruction or disposal) with the customs department/authority for Custom Recordal of IPRs?
What is the time frame for the customs department/authority to notify the applicants whether their application (for custom recordal of IPRs) is registered or rejected?
As soon as the notice of rights in favour of the IP rights holder are established, the Commissioner General in consultation with the Registrar begins to act on the request of the proprietor.
Does the customs department/authority have a centralized system or the Custom Recordal is required to be done with each port of entry in Malawi by land, sea, and air?
Yes, it is a centralized system.
Is there an online system for Custom Recordal in Malawi?
There is no online system for recording the IPRs in Malawi.
What is the official fee for Custom Recordal in Malawi?
What is the term of Custom Recordal of IPRs? Can it be further renewed?
Since the IPR holder has to specify the place and whether infringing goods, materials, or articles are expected to arrive in Malawi, the notice is effective only until that particular date and time.
Does the customs department/authority have a right to conduct raids and seize the counterfeit goods within Malawi?
In which scenario does the customs department/authority suspend the clearance of imported goods?
Where the goods, materials, or articles are suspected of being infringing in nature of the original goods concerning which the IPR is registered by the righteous proprietor, the goods maybe suspended for clearance until the final determination is made.
Who bears the liabilities and expenses related to suspension of the release of infringing goods?
The applicant bears the liabilities and expenses related to suspension of the release of infringing goods.
Is the IP rights holder authorized to examine the goods, the clearance of which has been suspended?
Is the IP rights holder authorized to request the information about the personal details of the importer and additional crucial piece of information concerning the consignment, which has been suspended from clearance?
Can the importer or the authorized representative of the goods, which have been suspended from clearance, request the information of the IP rights holder in question?
Within what timeframe the IP rights holder needs to confirm whether the goods are counterfeit or original after suspension?
Where the IP rights holder is informed that the goods are of infringing nature, the disclosure of that information is made at the earliest. Thereafter, the investigation or prosecution of the offence is conducted. There is no fixed timeline to revert concerning the authenticity of the goods.
Is the IP rights holder required to produce an injunction order or evidence of court proceedings to detain the goods?
If the answer to the above question is 'Yes,' then what is the deadline to do so?
Does the IP rights holder need to pay an additional bond for the detention of goods?
If the answer to the above question is 'Yes,' then to what extent and how is the valuation calculated?
The IP rights holder or the applicant has to:
Give such security as may be so specified in respect of any liability or expense, which the Commissioner General may incur in the process of protecting the trademark; or
Indemnify the Commissioner General against any such liability or expense, whether the security has been given or not.
In the scenario where the goods detained or seized are found to be infringing the IPRs of the IP rights holder in question, what steps does the customs department/authority take?
The customs authority informs both the parties about the detention of such goods. Thereafter, a suit for infringement action has to be instituted in the court of law by the IP rights holder where the final determination as to the nature of the goods is ascertained.
Does the customs authority invite the rights holder and importer to join the proceedings? Are there any consequences of failure to join such proceeding, if any?
Yes, to enforce the respective IPR, a suit has to be filed by the IPR rights holder. Failure to join the proceedings shall lead to a termination of the investigation being made in furtherance of the notice made to the Commissioner General.
Before disposal/destruction of infringing goods, does the right holder need to submit a ‘no objection’ or concurrence document?
Are there any disadvantages of Custom Recordal of IPRs in Malawi? If yes, then kindly give 2-3 points?
The Custom Recordal is not very formalized since it is a notice of information rather than a recordal of rights, per se. Therefore, a proper recordation system with appropriate statistic is deficient in Malawi.
If an IP rights holder is not satisfied with the action taken by the customs department/authority, can he/she initiate separate legal proceedings to enforce his/her IP rights?
To establish if the goods are counterfeit before the court of justice, will the affidavit by the IP rights holder suffice or any other documentary requirement is there?
The court may require submission of other documents as well to ascertain the rights of both the counterparts.
Upon conclusion of proceedings before the Court of Justice, what are the possible remedies awarded by the court?
A person - who sells, imports, exports, lets for hire or distributes goods, or performs any services to which a forged registered trademark is applied or a registered trademark is falsely applied - commits an offence, and shall, on conviction, be liable to a fine of K5, 000, 000.00 and imprisonment for 10 years.
Is the rights holder under an obligation to inform customs authority when his Intellectual Property Right ceases to be valid/ he ceases to be the owner of such IPR?