BORDER PROTECTION IN THE BALKANS Potential solutions
Te customs authority should continue to detain goods on suspicion of trademark infringement, regardless of whether the holder has a trademark corresponding to those particular goods being detained. Tis should not be difficult for customs officers in the case of famous trademarks. It should be expected that customs officers will be suspicious when they find marks they
acquainted with as having a high reputation fixed to products on which they do not usually appear.
For instance, customs officers would be well acquainted with the fashion articles on which a famous fashion label normally appears, but their suspicion would be aroused if they encountered the same mark fixed to a mobile phone.
Once the holder has been notified of the seizure in the normal manner, at least one of the options below should be available to prevent the release of the products onto the market:
• Customs could allow the holder to commence court proceedings on the basis of its famous trademark. Following confirmation that court proceeding had commenced, the customs office could then suspend the regular customs seizure proceedings
are personally
“A REGISTER OF FAMOUS MARKS WOULD IMPROVE NOT ONLY CUSTOMS SEIZURE PROCEEDINGS IN CASES WHERE SUCH MARKS ARE INVOLVED, BUT WOULD ALSO IMPROVE THE TRADEMARK SYSTEM IN GENERAL.”
until a final decision had been issued by the courts. Given that the destruction of the goods cannot be achieved through the simplified procedure (despite the fact that the importer may not have objected to the destruction), the degree of protection provided to reputed trademarks is still limited. However, destruction would be
achieved through the
court proceedings in which the reputation of the trademark in question would be recognised.
• Customs could be empowered by law to decide whether the mark appearing on the detained products is famous. Tis assessment would be made in accordance with the same criteria used by the IP office and/or the courts. However, the scope of such a decision would be limited to customs seizure proceedings before the customs authority. If the mark were subsequently found by the IP office or the courts not to have sufficient reputation, the customs authority would then be obliged to adopt this view and the holder would be unable to rely on the reputation of its mark in customs actions.
• Te most effective and attractive option would be to introduce a register of famous trademarks administered by the IP office, as this would additionally strengthen the enforcement of famous trademark rights, while further eliminating the discretionary powers of customs in each case, thus bringing a more uniformed approach. Tis is not a new idea, and should represent a relatively uncontroversial way of dealing with the issue of famous marks.
Te legal basis for the introduction of such a register lies in the international treaties relating to trademarks, which oblige national governments to provide enhanced protection to well-known marks.
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World Intellectual Property Review Annual 2014
www.worldipreview.com
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