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Enforcing IPR At The Border

PNGCS MANDATE

Mandated to facilitate legitimate trade and protect local industries and communities, the Papua New Guinea Customs Service is also stepping up its efforts in monitoring and enforcing Intellectual Property Rights at the borders pursuant to the Customs Prohibited Imports Regulation.

An entity registers its intellectual property over a particular good with the Intellectual Property Office of PNG (IPOPNG) of the Investment Promotion Authority is the right holder.

In doing so the entity may also seek to enforce its rights at the borders by applying to Customs under the Customs Prohibited Imports Regulation.

What are intellectual property rights?

Intellectual Property Rights (or IPR) as defined in the Copyright & Neighbouring Rights Act 2000 and any other law on intellectual property rights such as trademarks, patents and industrial designs refers to the creation of the mind. It covers works in the area of:

  • Literary and artistic works – e.g. books, songs, movies, etc;
  • Trade Marks/Brands – names of products (as in goods & services) or names of businesses;
  • Inventions – e.g. light bulb, telephone, motor car, medicines;
  • Designs – e.g. designs of chairs, watches, shoes or vehicles, etc.

Intellectual property rights like any other property are private rights hence the onus is on the right holders themselves to monitor and enforce. These rights, however, can be sold or licensed to third parties.

What are goods infringing intellectual property rights?

Any goods which are made, reproduced, or put into circulation or otherwise used in breach of the IPR laws and without the consent of the right holder or a person duly authorized to do so by the right holder. These goods are referred to as counterfeits. They are fake and non-genuine goods that are made in exact imitation of well-known or famous products with an intent to mislead and deceive the public into buying them.

The following laws provide protection for intellectual property rights in the country:

  • Patents & Industrial Designs Act 2000 - protection of inventions and industrial designs;
  • Copyright & Neighbouring Rights Act 2000 - protection of literary and artistic works;
  • Trademarks Act Chapter 385 - protection of names of products (goods and services), businesses or brands.

*It is important to note that the IPR laws above are administered by the Intellectual Property Office PNG (IPOPNG) of the Investment Promotion Authority.

ENFORCEMENT PROCESS

Legitimate businesses that know of suspected infringers bringing in counterfeit, pirated and suspected goods should immediately contact the Intellectual Property Rights & Industry Standards Section of the Enforcement Division of PNGCS. The section is responsible for monitoring and enforcement of IPR through the Recordation and Intervention process.

Recordation Process

A right holder who has reasonable grounds to believe/suspect that his/her IP rights are violated may seek Recordation valid for two (2) years by registering with Customs.

  • The prescribed application form should be correctly filled with supporting documents including IPOPNG issued certificates/extracts; if the right holder is a distributor or a manufacture then certified copy of distributor or license to manufacture agreement etc should be furnished;
  • Recordation when granted allows Customs to check suspicious conveyances/shipments that have been imported, for exportation or are in transit within the two-year recordation period;
  • It is important at the time of making an application for right holder to supply samples of products plus images for Customs purposes;
  • Applications for renewal shall be made two (2) months before the date of expiration. The right holder shall inform the Chief Commissioner of Customs when the right ceases to be valid.
ntervention Process

The intervention process follows after a detection made by Customs is verified by the right holder.

  • The prescribed form should be filled and accompanied with a K2,000 non-refundable processing fee and supporting documents;
  • If all documentation is in order, Customs will grant intervention to right holder with a 10 working day suspension period;
  • Customs shall notify importer of same;
  • The right holder may initiate legal proceedings against infringer within a 10-day suspension period and further seek an extension by writing to Customs based on reasonable grounds;
  • Failure on Right Holder’s part to inform Customs within the10-day suspension period of any legal proceedings will result in goods been released to importer. This is subject to all other Customs requirements been met;
  • It is important to note that an applicant at time of been granted intervention shall provide security or prove that it has sufficient assets to compensate the owner of the goods and the Chief Commissioner of Customs for any loss or damage that may result from the wrongful suspension of customs clearance.
Ex-officio

PNG Customs can on its own initiative suspend Customs clearance and detain goods in respect of which there is prima facie evidence or reasonable cause to believe that an IPR had been infringed or the goods are protection-defeating devices.

Breaches of Legislation

It is imperative to note that all goods which are counterfeit trademark goods or are pirated copyright goods or goods infringing intellectual property rights or protection defeating devices shall be forfeited to the State. This is in accordance to Section 146 (1)(ca) of the Customs Act, Chapter 101.

It is important to note that under Section 153 (k) of the Customs Act, Chapter 101, a person who is not the right holder and who imports, exports or transit any goods which are:

  • Counterfeit trademark goods; or
  • Pirated copyright goods; or
  • Goods infringing intellectual property rights; or
  • Protecting defeating devises

Is guilty of an offence and is subjected to penalty provisions as prescribed.

It is also important to note that the owner, the importer, the exporter, the consignee, or the consignor will pay the costs of storage and destruction of any goods suspended and determined to be counterfeit, pirated, or otherwise infringes an intellectual property right.

IP RIGHTS

  • It is therefore imperative that authorization to use must first be sought;
  • It is the responsibility of the right holder of the intellectual property right to protect, monitor and enforce.
  • Record your valid IPR with PNG Customs for monitoring and enforcement at the borders.

For further information/query or if you are interested to record your IP with PNG Customs then please contact us on the following;

Email: ipris@customs.gov.pg, itagaub@customs.gov.pg, kirewok@customs.gov.pg, frankg@customs.gov.pg

Telephone: (675) 312 7526