The customs authorities must search out pirated items on their own initiative and prevent their importation into Norway. When products are discovered that are suspected of infringing on intellectual property rights, customs authorities must notify the rights holders as well as the recipient of the commodities that the goods have been withheld under section 15-5 of the Customs Act.
The notice gives the rights holders a five-working-day window to investigate whether the goods are pirated (or otherwise infringe their IP rights) and obtain the importer’s written consent to the goods’ destruction or a court order on the goods’ continued detention, while regular courts decide on destruction and possible damages. The products will be released to the importer if the rights holders do not act within the time.
This deadline used to be twice as long (10 working days), but under the current rules, rights holders can purchase a lot more time (and help) by filing a “application for assistance from the customs authorities” under section 15-1 of the Customs Act.
Procedure with assistance from customs authorities
This type of request for customs assistance can be made after obtaining news of detention (in that case, within four working days from the date of notification under section 15-5(4) of the Customs Act), or even before the importation of unauthorized copies has been discovered.
The application (which must be submitted electronically using the Altinn site) must include information about the relevant rights as well as any information the applicant may have about pirated copies. If the applicant does not have any specific information, the application might be filled out in a generic manner.
The customs authorities make a decision on assistance following the submission of the application under section 15-2 of the Customs Act. The judgment is valid for one year and can be simply renewed when the validity period has 30 days remaining. When the customs authorities decide to assist, a notice is sent to the rights holder and the importer in the same manner as mentioned above; however, there are three key differences:
- The deadlines have been extended and can be extended up to a total of 20 working days (section 15-7(1) and (2) of the Customs Act).
- It is no longer the burden of the rights holder to seek the importer’s written authorization to destroy the products in order to prevent their release. It is up to the importer to vigorously resist the items’ destruction if the rights holder confirms that they are pirated or otherwise infringe on their IP rights. If the importer does not present an opposition to their destruction within 10 working days from the date of notification, this is considered consent to destruction under section 15-7(1) of the Customs Act.
The rights holder will be notified if the importer actively opposes destruction within the time limit. To prevent the goods from being transferred to the importer, the rights holder must file an ordinary infringement claim against the importer within a new 10-day deadline (under section 15-7(3) of the Customs Act). Once the action has been filed, the commodities will be held in customs custody until the infringement issue has been resolved in court.
Perishable goods: For perishable commodities, the law’s 10-day deadlines are usually substituted by three-working-day deadlines.
Small shipments: Section 15-8 of the new rules contains separate, simplified rules on so-called “small consignments”. The rules apply if the customs authorities agree to help and the rights holder has agreed to the procedure for small consignment destruction in the application form.
In that circumstances, customs authorities may, on their own initiative, arrange for the destruction of small consignments without notifying the rights holders, assuming the importer does not aggressively object. “Small consignments” are defined under section 15-8-1 of the Customs Regulations as postal or courier consignments that contain five or fewer goods or have a gross weight that does not exceed three kilos.
Cost responsibility: The applicant must declare themselves liable for any expenditures paid by the customs authorities in connection with the storage and probable destruction of withheld items in the application for help from the customs authorities, which is required under section 15-9 of the Customs Act. Any costs for storage or destruction, on the other hand, may be reimbursed by the importer as legal costs in an infringement lawsuit or as compensation in a separate proceeding.
According to the former approach, the rights holder was also responsible for the costs, and history shows that customs authorities practically never demand covered costs for the destruction of products. However, significant storage costs may be incurred in circumstances where bigger consignments of commodities must be stored over time, for which the rights holder is responsible.
Goods in transit: Changes to Norwegian trademark law will be implemented soon, allowing customs authorities to detain pirated copies in route. That is, items that are only in Norway temporarily while being transported from and to another nation. Only in circumstances where the allegedly infringed trademark is protected in the country of destination of the goods will the regulations on withholding goods in transit apply.
Active interim injunctions: For the time being, the new provisions will run alongside the existing procedure for interim injunctions under section 24-7 of the Disputes Act. Rights holders with such injunctions, on the other hand, will not be able to use the above-mentioned simplified processes for small consignments. However, as a result of the developments, this injunction remedy will become significantly less appealing and useful for rights holders in the future.
Strengthening of rights holders’ position
The new laws significantly strengthen the rights holder’s position, provided that the rights holder takes use of the possibility to ask for customs aid. The following are some of the advantages of submitting a request for assistance:
- A good application for assistance from the customs authorities may contain information that improves the customs authorities’ ability to detect and stop the import of illegal copies of goods.
- If/when counterfeit goods are discovered and withheld, the rights holder has more time to examine the goods and possibly seek legal assistance.
- If/when counterfeit goods are discovered and withheld, the customs authorities take care of the demanding dialogue with the importer in the first instance. The rights holder previously had to do this themselves (usually with expensive, professional assistance).
- If the importer opposes the destruction of the goods, it is sufficient to institute legal action to avoid the goods being released to the importer. Without a decision on assistance from the customs authorities, the rights holder would have to be granted an interim injunction for the customs authorities to be able to withhold the goods pending a legal clarification on the question of infringement.
- The rights holder can choose to use the simplified rules that apply to small consignments.
There are no public expenses associated with requests for assistance from customs authorities, thus there is no reason not to do so if it is suspected that copies of items have been imported into Norway.
Importers must actively oppose destruction
The previous procedure required the rights holder to get the importer’s permission to destroy withheld goods. It was thus a successful method for the importer to make themselves unreachable, resulting in the products being released unless the rights holder launched (possibly risky and expensive) legal action.
To avoid the destruction of withheld goods as a result of these developments, the importer must take proactive measures. This means that hiding from the rights holder is no longer an option, and importers must take all notices seriously – after all, the rights holder’s evaluation of the legality of the goods may be incorrect.
Exemptions for private imports are being whittled down.
Private individuals’ imports of goods for personal use have generally been exempt from Norwegian customs and intellectual property laws, which have solely applied to imports in commercial enterprises. As a result, it has become lawful to import modest quantities of pirated items for personal use. As a result, a number of corporate imports have been attempted to be concealed by breaking bigger orders addressed to one or more private individuals into smaller transactions.
However, the new guidelines stipulate that the idea of business must be defined in accordance with the Rolex decision of the European Court of Justice (C-98/13). This means that the sender only needs to act for business objectives for the rules to apply. If the sender is a business, the new restrictions will apply to private imports.
You can see a list International IP firms here