Today, Edmund Jason Baranda, managing partner at Baranda and Associates, a member of the Rouse Network, provides advice on how to collaborate effectively with customs officials at border points and ports in the Philippines. Below, we explore the frontline of brand protection in the country, providing a guide on how to most successfully monitor for - and enforce against - counterfeit and grey market goods.
Yes, rights holders can record their IP rights, including trademarks and designs, with the Bureau of Customs (BOC) to aid officials in enforcing the prohibition on the importation of infringing goods. Customs Administrative Order (CAO) 6/2002 provides administrative guidelines for handling and disposing of infringing goods. It also set up the creation of a dedicated BOC division to handle IP border control protection. At present, the IP rights division (IPRD), under Customs Intelligence and Investigation, is tasked to handle customs recordation matters.
Rights holders may record their IP rights by:
The BOC-IPRD will then issue a customs memorandum circular stating the recordation and a description of the registered product(s), which will becirculated to port officers and custom collectors and further cascaded to frontline assessment officers, directing them to monitor imports accordingly.
The recordation and product(s) covered are valid for two years from the date of the recordal and renewable every two years thereafter. Renewal is done by submitting or updating the abovementioned documents before the two-year period expires.
Yes, aside from trademark registrations, rights holders can record copyrights and other IP registrations (eg, patents and designs) with Customs.
Under Section ll(A) of CAO 6/2002, prohibited items include:
If the intellectual property is not registered locally in the Philippines, the rights holder may submit three certified true copies of a decision or resolution issued by a court or other competent authority declaring or recognising the claim to the IP right.
Yes, product information regarding the IP right must be submitted to the BOC-IPRD. If possible, rights holders should submit a sample item to Customs to aid officials in enforcing border control measures against infringing goods.
Documentary requirements for the recordal are:
If the IP right is not registered with the IPOPHL, three certified true copies of a decision or resolution issued by a court or other competent authority declaring or recognising the claim to the IP right can be submitted.
For copyright and related rights not registered with the IPOPHL, an affidavit executed by the rights holder or its duly authorised representative can be submitted, stating that, at the time specified therein:
The BOC forms should provide:
For foreign rights holders, a notarised and apostilled power of attorney issued in favour of their chosen representative is needed.
The process of border control measures is carried out in the following order:
For rights recorded with Customs, rights holders are notified by the BOC-IPRD in case infringing goods are found during inspection. The BOC-IPRD would then request the rights holders or their representatives to issue a certification attesting that, after examination, the goods are infringing goods. The examining officials will then submit their findings to the customs collector.
In case of IP rights not recorded with the BOC-IPRD, rights holders may file a request for issuance of an alert of hold order against any import suspected to contain infringing goods upon submission of the documentary requirements previously mentioned. In such cases, the goods will be examined in the presence of the rights holder or its duly authorised agent, who will be notified of the time and place of the examination, within 24 hours from receipt of notice of the alert of hold order. If the rights holder or its agent cannot participate in the examination, the inspection will still proceed and the examining official will make their findings and recommendation.
In both instances, if there is a prima facie basis to subject the goods to seizure proceedings. The matter will be referred to the collector of customs to issue a warrant of seizure and detention against the shipment.
Upon seizure, the customs collector will, within five working days from the date of seizure, give the claimant, importer or owner of the seized article or their agent a written notice of the seizure. In case of an unknown owner, the notice will be effective for five days after posting in the customs house of the district in which the seizure is made and, under the discretion of the commissioner, publication in a newspaper.
After due notice, the customs collector will setthecase for hearing, which will be decided within 20 working days from its initial setting. Upon finding that the seized goods are infringing items, the customs collector will issue a final decree and order of forfeiture, subjecting the infringing goods to condemnation and destruction.
Rights holders may request for a certificate of finality and a copy of the condemnation report, detailing the destruction of the infringing goods.
Rights holders or their duly authorised representatives are usually contacted by the BOC-IPRD through the contact information provided in the general information form submitted during registration or renewal.
The timely execution of the requested certification by the rights holder attesting that the seized goods are counterfeit items or infringe its rights is important, as Customs may release the suspected infringing goods if it does not hear from the rights holder.
The official fee for recordal is based on the number of goods listed in the trademark registration, which is about $45 per item or product listed, with a cap of $450 for a trademark registration with 10 or more items.
Customs has periodically seized imported counterfeit products. Seized items include goods bearing the brands adidas, Birkenstock, Gucci, H&M, Louis Vuitton, Nike, Skechers, Supreme and Tory Burch, as reported by the IPOPHL and Manila Bulletin.
Nike, through its Asia-Pacific brand protection team, recognised Customs for seizing pl.56 billion ($27.7 million) worth of fake Nike shoes in 2023.
However, most seizures are inland (eg, at warehouses) and not at the border or ports. Therefore, it is likely that some of infringing goods have already been sold or distributed in the market before a raid. Rights holders have thus been calling for Customs to conduct more border seizures as it is a more effective way of stopping the flow of counterfeits into the market.
In addition to maintaining their recordals, brand owners may consider conducting brand identification and familiarity training sessions for customs officers. These training sessions help customs agents to readily distinguish counterfeits from originals.
The BOC-IPRD mainly relies on intel from brand owners to aid it in conducting seizures of counterfeits and to ensure efficient screening and inspection of incoming shipments. Information such as shipping and import details help officials to identify possible contraband shipments.
This article was first published by World Trademark Review in February 2024.
