CBP Publishes Interim Rule On IPR Disclosure Of Imported Merchandise

May 30, 2012

U.S. Customs and Border Protection (Customs) has published an interim rule and is soliciting comments regarding importations of merchandise bearing recorded trademarks or recorded trade names.  The notice, published April 24, 2012, states that the deadline for submitting comments is June 23, 2012.

To assist Customs in determining whether merchandise bears a counterfeit mark, the interim rule permits, subject to certain limitations, disclosure of information appearing on merchandise or its retail packaging to the intellectual property right (IPR) holder that might otherwise be protected by the Trade Secrets Act.  The interim rule does not involve copyrights or patents.  The information the interim rule allows to be provided to the IPR holder may be in the form of photographs, samples of the goods, and/or packaging.  The specific information will include, but is not limited to, serial numbers, universal product codes (UPC) and stock keeping unit (SKU) numbers appearing on the imported merchandise and its retail packaging.  These changes provide a pre-seizure procedure for disclosing information about imported merchandise suspected of bearing a counterfeit mark for the limited purpose of obtaining the IPR holder’s assistance in determining whether the mark is counterfeit or not.  The amendments include several changes to Parts 133 and 151.

Under the Trade Secrets Act (18 U.S.C. § 1905) Government officials are prohibited from disclosing, in the course of their employment or official duties, information that relates to trade secrets, processes, operations, style of work, etc., to unauthorized individuals or corporations.  Under the interim rule, if Customs reasonably suspects that imported merchandise and/or packaging may bear a counterfeit mark, Customs would be able to disclose information about the importation to the IPR holder during detention for the purpose of assisting Customs in determining whether the merchandise bears a counterfeit mark.  The interim rule also allows an importer 7 days in which to establish that the marks are not counterfeit, prior to the release of information to the IPR holder.

Clearly, the above interim rule demonstrates Customs’ continuing efforts to aggressively enforce trademarks and to halt the importation of infringing merchandise.

If you have any questions about this or other customs issues, please contact Steve Spraitzar at steve.spraitzar@tuttlelaw.com or at (415) 288‑0427.

Stephen S. Spraitzar is an attorney with the Law Offices of George R. Tuttle in San Francisco.

Copyright © 2012 by Tuttle Law Offices. 

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