Is Custom Recordal of Intellectual Property Rights (IPRs) available in Pakistan?
Is Custom Recordal of IPRs compulsory in Pakistan?
Is it an effective measure to stop the infiltration of illegal and counterfeit products in Pakistan?
Which law forms the legal basis for Custom Recordal of IPRs (Border Control Measures) in Pakistan?
The Customs Act, 1969 (IV OF 1969) (as amended up to 30th June, 2010) forms the legal basis for Custom Recordal of IPRs (Border Control Measures) in Pakistan.
Is Custom Recordal of IPRs effective on import or export of goods or both?
Chapter XXVIII of the Customs Rules, 2001, lays down the provisions for “enforcement of IPR,” which states that it shall only apply to imported goods and not parallel or grey mark imports or de-minimis imports.
What is the role of the customs department/authority? (Kindly give 2-3 points)
The role of the customs authority is as follows:
The Collector of Customs can take a suo motu action, in addition to action from the rights holders, based on a valid group of suspicion that the imported goods are infringing the existent IPR only in the case of patents and layout-designs. For the rest of the cases involving copyright and trademark, only the proprietor has the right to make an application to the Enforcement Director.
After seeking prior approval of the IPR Enforcement Directorate, the officer of Customs shall consult the recordation database to determine whether the rights holder of infringing goods is registered with Pakistan- IPO, after which, a notice of arrival of such goods will be sent to the rights holder to seek his consent to initiate enforcement action.
Upon such approval and payment of bank guarantee by applicant, the Customs shall destroy the goods. Re-exportation ad local sale isn’t allowed.
Is there a procedure to record IP with the customs department/authority? If yes, then kindly explain it in brief.
There’s is proper mechanism of recording such requests.
Annexure A to the Custom Act, 2021, sets out the application to be made by the rights holder/Collector of Customs to the Director of IPR (Enforcement) having jurisdiction, which includes the details of the applicant, his IPR, past history of recordation, description of goods, details of authorised traders, statement of grounds for detention, etc.
Notarized documents are to be submitted as per the format laid in Annex- B.
Submission of bank guarantee by the applicant as per the format in Annex-C.
Once the complete documents are submitted, the Director will accept or refuse as per the merits of the case, after which, the Collector shall proceed with the enforcement of IP.
What documents are to be submitted along with the application for Custom Recordal of IPRs?
The list of the documents are as follows:-
IPR Registration Certificate (certified Copy): Rights holders have the option to record their trademarks and copyright (provided they are registered with the Pakistani PTO) with the customs so that the customs officials could watch the IPRs throughout Pakistan.
Copy of CNIC (Computerized National Identity Card)
Copy of NTN (national Tax Number)
Copy of Passport
Indemnity Bond (annex-B)
Bank Guarantee (Annex-C)
Certified copy of PoA (Power of Attorney, in case of authorised representative)
Samples/Photos/Media (not mandatory, but preferred)
A statement of grounds for detention of pirated foods with prima facie evidence
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 per the 2017 amendment to the Custom rules of 2001, there is no timeline in the legislation. However, section 60(!) of the TM Act, lays down that a notice withing 10 working to the applicant is to be given by the applicant brining the action.
Does the customs department/authority have a centralized system or the Custom Recordal is required to be done with each port of entry in Pakistan by land, sea, and air?
For the custom recordation, an application has to be made at notified customs station to the Director of IPR Enforcement having jurisdiction. There are 4 directorates:
Directorate General (Islamabad)
Directorate (North) Islamabad
Directorate Central (Lahore)
Directorate south (Karachi)
Is there an online system for Custom Recordal in Pakistan?
No, a written complaint has to be made.
What is the official fee for Custom Recordal in Pakistan?
It is uncertain; however, the indemnity bond to be filled should be equal to 25% of the Customs value of the goods determined by Customs or Pak Rupees 500,000/- whichever is higher, which is liable for renewal up to discharge by Collector.
What is the term of Custom Recordal of IPRs? Can it be further renewed?
Does the customs department/authority have a right to conduct raids and seize the counterfeit goods within Pakistan?
In which scenario does the customs department/authority suspend the clearance of imported goods?
Where it is found that that the IPR is registered with the Pakistan PTO and the same has been infringed upon and the same is justified by the applicant/author of rights, the case is examined and details are verified by the Enforcement Director, after which, the goods are seized.
Who bears the liabilities and expenses related to suspension of the release of infringing goods?
The right-holder whose goods have been infringed upon 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?
The timeframe is not provided for in the Custom Rules. However, the process of detention and examination of the consignment, as provided in this section, shall be completed ordinarily within a period of 15 days from the filing of the application by the aforesaid person as per the Copyright Act. Also, after 03 years of alleged infringement, no action for infringement is maintainable.
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 indemnity bond to be filled should be equal to 25% of the Customs value of the foods determined by Customs or Pak Rupees 500,000/- (whichever is higher), which is liable for renewal up to discharge by Collector
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?
Concerning cases dealing with infringement of Layout Designs or Patents, the Custom Collector can take suo motu action and file an application. The same stands true for any violation of IPR, which may have repercussions on health and safety of the citizens. This may, then lead to a joiner of parties after intimating the rights holder. Once the bond and guarantees are furnished, the customs official obtains the right to act in furtherance of such request, which includes the right to confiscate and destroy the goods in accordance to provisions of the Custom Act.
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, the IPR Directorate orders joining of proceedings by both the owner of infringing goods and the rights holder. The owner of infringing goods can voluntarily give consent to Director of goods being forfeited in favour of the government.
Before disposal/destruction of infringing goods, does the rights holder need to submit a ‘no objection’ or concurrence document?
Are there any disadvantages of Custom Recordal of IPRs in Pakistan? If yes, then kindly give 2-3 points?
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?
Upon conclusion of proceedings before the Court of Justice, what are the possible remedies awarded by the court?
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?