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Custom Recordal of IPRs in Pakistan


Custom Recordal of IPRs
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.
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.
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.
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.
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
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.
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)
No, a written complaint has to be made.
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.
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.
The right-holder whose goods have been infringed upon bears the liabilities and expenses related to suspension of the release of infringing goods.
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.
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
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.
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.