CBP Revises ICP on 'Enforcement of Intellectual Property Rights'

CBP posted a revised version of its informed compliance publication entitled, "CBP Enforcement of Intellectual Property Rights." The document was updated in August this year and was last previously updated in October of 2009. The ICP update largely reflects interim rules allowing CBP to disclose to an intellectual property right holder information appearing on merchandise or its retail packaging for the purpose of assisting CBP in determining whether the merchandise bears a counterfeit mark. CBP asked for comments on the interim rules in April.

(See ITT's Online Archives 12042320 for summary of the request for comments. See ITT's Online Archives 12062605 and 12062726 for summaries of industry comments on the issue.)

Highlights of this ICP include the following:

Counterfeit Marks

The ICP updates the seizure procedures for dealing with counterfeit marks, adding new material within the disclosure of information section. "Where merchandise is suspected of bearing a mark that is counterfeit of a recorded trademark, CBP will provide the trademark owner prior to seizure with any information appearing on the merchandise or its retail packaging, or a sample of the merchandise including its retail packaging, for the purpose of determining whether the imported merchandise bears or consists of a counterfeit mark," it said.

Within five days of merchandise suspension, CBP will notify the importer in writing of the detention, it said. The notice will inform the importer that a disclosure of information concerning the detained merchandise may be made to the owner of the mark unless the importer can satisfy CBP within seven days of the notification (excluding weekends and holidays) that the detained merchandise does not bear a counterfeit mark. Several trade groups lobbied against the seven day period in their comments to CBP.

Afterward, CBP may disclose information appearing on the merchandise and/or its retail packaging, images (including photographs) of the merchandise and/or its retail packaging in its condition as presented for examination, or a sample of the merchandise, it said. CBP "will release to the owner of the mark a sample when the owner furnishes CBP a bond in the form and amount specified by the port director, to hold the U.S. and the importer, harmless from any loss or damage resulting from providing of the sample."

Copying or Simulating Marks

The updated ICP includes a new section under Trademarks on "Copying or Simulating Marks." That new section replaces the "Confusingly Similar Use of a Trademark" section from the 2009 version. The ICP now says "a copying or simulating mark or trade name is one that so resembles a recorded mark or name as to be likely to cause the public to associate the copying or simulating mark or name with the recorded mark or name." Merchandise with such a mark is "subject to detention and possible seizure," it said.

Such merchandise shall be denied entry and detained for 30 days from the date on which the goods are presented for examination by CBP, during which time the importer shall be afforded the opportunity, before expiration of the 30-day period, to establish that any of the circumstances described in 19 CFR Section 133.22(c) are applicable, e.g., the objectionable mark is removed or obliterated as a condition to entry in such a manner as to be illegible and incapable of being reconstituted, or the recordant gives written consent to importation of the merchandise, said CBP. If the importer hasn't obtained release of the merchandise within 30 days, the merchandise shall be seized and forfeiture proceedings started.

Imported merchandise or packaging in which trademark or trade name violations are involved may be seized and forfeited pursuant to 19 U.S.C. Section 1595a(c)(2)(C) and 19 CFR Section 133.22(f), said the ICP. Merchandise bearing a mark which is confusingly similar to a trademark registered with the United States Patent and Trademark Office, but which is not recorded with CBP is not subject to detention or seizure.

(See ITT's Online Archives 09111120 for summary of the Oct. 2009 update to the ICP.)