Changes to the Trade Marks Act 1995 which came into effect 15 April 2013, simplify the custom seizure process and more importantly benefit brand owners. These changes now place the initial onus on the importer of seized goods to make a claim to those goods.

Under the old regime, when the Australian Customs Service seizes allegedly counterfeit goods, if the relevant brand owner of the registered trade mark does not obtain the consent of the importer of those seized goods to forfeit the goods or the brand owner does not otherwise commence litigation for trade mark infringement against the importer, the seized goods are released. This places a great deal of pressure on the brand owner, in terms of time and money, to act quickly at the outset.

The changes to the customs seizure process and the resulting reversal in onus now mean that in order for an importer to make first make a claim to the seized goods, they will need to provide their contact details as well as details of the overseas manufacturer. If they do not do so within the required timeframe, the importer will have been taken to have automatically forfeited the seized goods.

Customs will also have the discretion to provide the relevant brand owner with a sample of the goods. This change will make it a much easier process for the brand owner to make an informed assessment as to whether the seized goods are in fact counterfeit or otherwise (for example parallel imports).

This new regime will be more favourable to brand owners and rightly so. Every year the influx of counterfeit products into Australia causes substantial damage to brand owners and can in some cases pose a risk to consumers (often counterfeit goods are of inferior quality). This new seizure process will likely result in a greater number of seizures being forfeited and allow brand owners to focus their anti-counterfeiting litigation spend against select cases where claims are made and which have the greatest impact.