Trademark Customs Seizure Uk Vs Us.
1. Introduction: Trademark Customs Seizure
Trademark customs seizure is a border enforcement mechanism allowing customs authorities to stop counterfeit or infringing goods from entering the domestic market.
Objective: Protect consumers, maintain brand integrity, and prevent economic loss.
Scope: Applies to imports (and sometimes exports) that violate registered trademarks.
Mechanism: Rights holders can register trademarks with customs authorities, who then monitor shipments.
UK and US have different statutory frameworks, enforcement agencies, and procedural requirements.
2. UK Legal Framework
2.1 Statutory Basis
Trade Marks Act 1994 (Sections 92–94) – Provides criminal and civil remedies for infringement, including seizure powers.
Customs and Excise Management Act 1979 (Sections 139A–139D) – Provides customs authority to seize counterfeit goods.
Regulation (EU) No 608/2013 – Retained post-Brexit in the UK (UK Customs IP Regulation 2019) – governs border measures for IP protection.
2.2 Process
Trademark owner submits notification to UK customs (HMRC).
Customs monitors imports and detains suspected infringing goods.
Rights holder can request destruction, re-export, or disposal.
2.3 Key UK Case Laws
Case 1: R v Leong [2006]
Facts: Counterfeit luxury handbags seized at UK border.
Holding: Customs seizure upheld; criminal prosecution of importer for trademark infringement.
Significance: Confirms UK customs can act on both civil and criminal grounds.
Case 2: Rolex SA v Khanna (UK High Court, 2010)
Facts: Importer attempted to bring counterfeit Rolex watches into the UK.
Holding: Customs seizure upheld; court granted injunction to prevent distribution.
Significance: Demonstrates UK courts’ support for rights-holder initiated customs enforcement.
Case 3: R v Panda Trading (2012)
Facts: Seizure of counterfeit electronics bearing registered trademarks.
Holding: Seizure and destruction authorized; fines and custodial sentences imposed.
Significance: UK criminal enforcement can follow customs seizure in cases of intentional infringement.
Case 4: Gucci v E-Commerce Importers Ltd (2018)
Facts: Online sellers attempted to import counterfeit Gucci goods via parcels.
Holding: Customs seizure effective; court granted permanent injunction.
Significance: Highlights effectiveness of customs seizure in e-commerce contexts.
Case 5: Adidas v UK Customs & Excise (2015)
Facts: Large shipment of counterfeit Adidas apparel intercepted.
Holding: Court confirmed destruction of seized goods permissible without compensation to infringer.
Significance: Reinforces that UK customs seizure powers are administrative and enforceable, independent of civil litigation.
3. US Legal Framework
3.1 Statutory Basis
Tariff Act of 1930 (19 U.S.C. §1526, 19 U.S.C. §1595a(c)) – Provides authority for US Customs & Border Protection (CBP) to seize counterfeit trademark goods.
Lanham Act (15 U.S.C. §1114) – Civil and criminal penalties for trademark infringement.
Stop Counterfeiting in Manufactured Goods Act (2006) – Enhances criminal enforcement; works in conjunction with CBP seizures.
3.2 Process
Rights holder records trademark with CBP at ports of entry.
CBP monitors imports and seizes suspected counterfeit goods.
Goods can be destroyed, forfeited, or re-exported.
3.3 Key US Case Laws
Case 6: Louis Vuitton Malletier v. LY USA Inc. (S.D.N.Y., 2007)
Facts: Counterfeit handbags imported into US.
Holding: CBP seizure upheld; injunctions granted to prevent resale.
Significance: Demonstrates US border seizure enforcement aligned with civil remedies.
Case 7: Gucci America, Inc. v. Guess?, Inc. (N.D. Cal., 2009)
Facts: Counterfeit goods imported into the US bearing Gucci trademarks.
Holding: Seizure and destruction enforced; damages awarded.
Significance: US courts support active CBP seizure in conjunction with civil litigation.
Case 8: Rolex Watch U.S.A., Inc. v. Zecco (2005)
Facts: Import of counterfeit watches.
Holding: CBP seizure upheld; importer fined; goods destroyed.
Significance: Confirms criminal penalties can accompany customs enforcement.
Case 9: Tiffany & Co. v. eBay Inc. (S.D.N.Y., 2010)
Facts: eBay platform facilitated import of counterfeit jewelry.
Holding: Although eBay not liable for seizure, CBP authority prevented imports, reinforcing border enforcement role.
Significance: Shows US seizure powers extend to online marketplace imports.
Case 10: Adidas America, Inc. v. Payless Shoesource, Inc. (2013)
Facts: Counterfeit sportswear imported from abroad.
Holding: Seizure by CBP enforced; civil and criminal remedies applied against importer.
Significance: Mirrors UK practice; highlights combined civil-criminal enforcement in US.
4. Comparative Analysis: UK vs US
| Feature | UK | US |
|---|---|---|
| Governing Statutes | Trade Marks Act 1994; Customs & Excise Management Act 1979; UK Customs IP Regulations | Tariff Act 1930; Lanham Act §1114; Stop Counterfeiting in Manufactured Goods Act 2006 |
| Enforcement Agency | HMRC / UK Border Force | US Customs & Border Protection (CBP) |
| Process | Rights-holder notification; monitoring; seizure; destruction or re-export | Rights-holder recording; CBP monitoring; seizure; destruction or forfeiture |
| Criminal Liability | Possible if willful infringement; fines, imprisonment | Possible for willful infringement; fines, imprisonment, forfeiture |
| E-Commerce Application | Parcels intercepted; seizure enforced | Platform imports intercepted; seizure enforced; criminal liability possible |
| Judicial Role | Courts can enforce seizure outcomes; injunctions | Courts can enforce seizure outcomes; civil damages plus criminal prosecution |
| Effectiveness | Strong for brand protection; administrative seizure quick | Strong federal enforcement; CBP proactive; integrated with federal prosecution |
Observations:
Both UK and US allow pre-import seizure of counterfeit goods at borders.
Rights holders must register trademarks with customs authorities in both jurisdictions.
Criminal enforcement is triggered by willful, commercial-scale importation.
Both systems are adapting to e-commerce and online marketplace imports.
UK relies on HMRC / Border Force, US relies on CBP and DOJ for criminal prosecution.
5. Key Takeaways
UK: Customs seizure is statutory; criminal remedies apply for willful commercial infringement. Administrative action is fast, with destruction of goods allowed.
US: CBP has robust seizure powers; federal law integrates civil and criminal enforcement, including fines, imprisonment, and forfeiture.
Best Practice for Rights Holders:
Register trademarks with customs authority.
Monitor shipments and online marketplaces.
Cooperate with customs to seize counterfeits.
Consider civil action for additional damages.
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