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Enforcement of Intellectual Property Rights with particular reference to the border Security Measures



With the growing awareness of the need to safeguard intellectual property, particularly in the face of counterfeit trademarks and pirated copyrighted items, border enforcement of intellectual property rights has become a major issue in recent years.As a result, the scheme of border measures has been discussed at various flora around the world, including the World Trade Organization, the World Customs Organization, and the World Intellectual Property Organization, as well as during the negotiation process of numerous multilateral and bilateral free trade agreements.

India, too, aimed to make it easier for right holders to enforce intellectual property rights at the border, thereby improving intellectual property border protection. The Intellectual Property Rights (Imported Goods) Rules, 2007 were notified by the Indian government in May 2007.The Rules, which are based on the World Customs Organization’s model law, aim to give Customs authorities the right to halt the clearance of products suspicious of infringing on intellectual property in India. They also give Customs officials the authority to arbitrate on the question of infringement and confiscate or dispose of items if the right holder is found to be the rightful owner.The Rules, on the other hand, are a big source of worry for importers. They fail to achieve a balance between right holders’ rights and the safeguards presented to importers, as well as right holders’ obligations. As a result, they have a high risk of being abused, and their execution has a checkered history.The dual–SIM patent controversy, which is currently being debated in various Indian courts, highlights the issues brought up by the execution of these rules and makes a case for their re-evaluation.

TRIPS Agreement’s Obligations

Despite the fact that most developing countries have substantive laws for the enforcement and protection of intellectual property rights, the enforcement level was quite low.After 1994, however, the situation altered with the TRIPS Agreement, which established unique rules dealing with border measure requirements under Section 4 of Part III, and in particular, Articles 51-60.The preamble to the TRIPS Agreement reflects a large part of the international consensus on proper intellectual property enforcement. These commitments, in contrast to the voluntary clauses of the Berne and Paris Conventions, significantly enhance the standards of IPR enforcement under international law.

  • Under Article 51 of the TRIPS Agreement member nations are required to designate competent administrative or judicial authorities to direct customs officials to suspend the discharge of suspicious fraudulent trademark or pirated copyright items into free circulation.It’s worth noting that the term “counterfeit trademark products” is only defined as “visible infringing items.”
  • Article 53, which permits the competent authorities to require proper security or comparable assurance necessary enough to preserve the defendant’s interests, provides suitable procedures for preventing the exploitation of border measures.
  • Article 56 states that, in the event of any injury incurred as a result of wrongful detention or the release of goods pursuant to Article 55, the competent authorities have the authority to order the applicant to pay suitable compensation to the importer, consignee, or owner of goods. 
  • In view of Article 41(5), which recognizes that the TRIPS Agreement has no bearing on a member’s ability to enforce their law in practice, it’s worth noting that in India, the state can be sued directly for any wrongful detention by customs officers.
  • Article 57 of the TRIPS Agreement mandates that member nations grant the power of investigation to both the right-holder and the importers in order to validate their claims.

Where such actions are permissible, the TRIPS Agreement even specifies the procedures for ex-officio acts by customs authorities.

Position of India on the TRIPS Obligation

The Indian Customs Act of 1962 is the fundamental legal framework for enforcing border controls in India. Section 11(2)(n) of Chapter IV allows for the issuance of notifications to protect certain types of intellectual property rights in relation to border measures.It’s important to remember that this section only addresses piracy of patents, trademarks, and copyrights; it doesn’t include other types of intellectual property rights.

Section 53 of the Copyright Act of 1957 allows the owner of a copyright or his lawfully authorized representative to apply to the Registrar of Copyrights in a prescribed form for an order prohibiting the import of infringing copies after the Registrar conducts such inquiries as he considers necessary.

Likewise, Section 140 of the Trade Marks Act, 1999, addresses border measures and enables the right owner to submit a representation to the commissioner of customs, who, if satisfied, is authorized to conduct additional investigations and take action regarding infringing goods under the Customs Act.

Customs authorities have the authority under Section 106 of the Customs Act to intercept and inspect conveyances, if they have reason to believe smuggling operations are taking place.

Furthermore, the customs authorities have been given the authority to seize commodities that are subject to confiscation, with the added necessity of providing a notification within six months of the date of confiscation.It’s worth noting that commodities imported or tried to be imported in violation of any legal provision can be seized without the need for a formal notification.In the event of inappropriate importation of goods, the Act provides for a penalty of up to Rs 1000, or even up to five times the value of the commodities. In addition, there are rules that provide for the importer’s imprisonment for up to three years if the importation is improper.The commodities that have been confiscated belong to the government, and the Commissioner of Customs has the right to impose penalties after following the rules of natural justice.


The commodities that have been confiscated belong to the government, and the Commissioner of Customs has the right to impose penalties after following the rules of natural justice.It’s worth noting that, while Sections 52 and 53 of the TRIPS Agreement require Member countries to confiscate and suspend the release of goods at the request of the right-holder, they only require Member countries to have procedures in place that allow competent authorities to act independently on their own campaign.Apart from the right of a right holder to approach the Registrar of Copyright and Commissioner of Customs in case of any copyright or trademark violation, the Indian Customs Act, 1962, goes a step further and requires the customs authorities to act suo moto in case of any intellectual property rights violations.This is primarily due to the government’s initiatives to use border controls as soon as possible.

However, a gap exists because the Customs Act of 1962 does not specify the time limit within which a copyright owner can obtain an order of detention and acquisition from the Registrar of Copyright. Because the Registrar’s role is quasi judicial in essence, no order for the suspension of goods can be issued by customs personnel until the Registrar issues one.As a result, the Act must include the ability to suspend the release of products for a period of 10-20 days, as required by the TRIPS Agreement. The Act also fails to address the circumstance where the right-patent holder’s or trademark is not registered in the nation of export and import.It is important to remember that an application for registration from nationals of other nations must be lodged in India, as per Section 131 of the Customs Act, 1962. Thus, even if the right-owner has correct information about the infringed goods, the remedy may be difficult to obtain due to the lengthy procedure of registering a foreign trademark or patent.

Contributed by:– Nidhi Jha, Legal intern at LLL

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