Tuesday, 1st November, 2011

New powers to crack down on counterfeit goods

Provisions of the Trade Marks Amendment Act 2011 (the Act) which came into force on 7 October 2011, give new powers to the Ministry of Economic Development and the Customs Service to investigate and prosecute people involved in the manufacture, importation and sale of illegal goods.

A summary of each agency's powers is outlined below:

Ministry of Economic Development - Enforcement Officers

The Chief Executive may appoint enforcement officers who will have powers of entry and examination (without a warrant) and entry and search (with a warrant).

Entry and examination without a warrant is limited to open public places, open businesses (those parts open to the public) or in circumstances where the occupier of a place provides informed consent to the entry and examination. Places of entry and examination are defined; notably private dwelling houses are excluded. The enforcement officer may seize anything that he or she has reasonable grounds to believe is evidence of, or of significant relevance to the investigation of, an offence under the Trade Marks Act 2002 (TMA).

An enforcement officer or a member of the police may apply for a search warrant to search a place or thing. A search warrant will be issued where the issuing officer is satisfied an offence has been or is being committed, where there is at that place or thing evidence of an offence or anything that is intended to be used for the purpose of committing an offence. As well as the power to seize authorised items, the warrant provides powers to use reasonable force for the purposes of the entry and search, to secure the place or thing searched and to exclude any person from the place or thing searched.

A person who exercises a power of entry and examination or a power of entry and search must provide to the occupier (and every other person who it is believed is the owner of thing/s seized) an inventory of the items seized.

A thing seized may be retained by the Commissioner of Police or by the chief executive while it is required for the purposes of investigating or prosecuting an offence. If the thing seized is no longer required, it must be returned to the person entitled to it. A person claiming to be entitled to a thing seized may apply to the court for an order that the thing be delivered to him or her.

The Act makes provision for disposal of things seized and disposal of perishable things.

Enforcement officers may also apply for the production of documents relevant to the investigation of an offence. If a District Court Judge orders the production of a document the enforcement officer may inspect the document, take extracts and make copies of the document. A person who fails to comply with an order to produce documents is liable on summary conviction to imprisonment for a term not exceeding 6 months or a fine not exceeding $10,000. A body corporate is liable to a fine not exceeding $50,000.

Enforcement powers of Customs officers

A Customs officer may seize any imported goods in his or her control if the officer has reasonable cause to believe that they are evidence of, or of significant relevance to the investigation of, an offence under section 124(a) of the TMA (Offence to import or sell, etc, goods with falsely applied registered trade mark).

If a Customs officer believes goods have been imported in breach of the TMA, the chief executive may require the suspected importer or his or her agent to produce for inspection any documentation considered relevant to determining whether the goods should be seized or released. That person may also be required to appear before a Customer officer to answer questions.

As with enforcement officers, Customs officers may apply for search warrants to search a place or thing and may also apply for the production of documents relevant to the investigation of an offence. Customs officers are subject to the same provisions as enforcement officers in respect of these actions. Similarly, a person who fails to comply with an order to produce documents is liable on summary conviction to imprisonment for a term not exceeding 6 months or a fine not exceeding $10,000. A body corporate is liable to a fine not exceeding $50,000.

The Government reminds rights holders that enforcement of these criminal offences is not a substitute for civil action. The responsibility for protecting and enforcing copyright and registered trade marks still lies with rights holders. Customs Minister Maurice Williamson said Customs will be focusing on importers of commercial quantities of counterfeit goods, recidivist offenders, and cases where there is a serious question of community health and safety.

An edited version of this article also appeared in the International Law Office e-newsletter on 5 December 2011.