Amended law protects trademark owners against counterfeiters

The Czech government has amended the Law on Measures Concerning the Import, Export and Re-export of Goods Violating Certain Intellectual Property Rights (191/1999), thereby providing trademark owners with better protection against imports of counterfeit goods.

Prior to Amendment 260/2002, customs authorities were not authorized to make a final determination as to whether suspected goods were actually counterfeit; the Czech courts held exclusive jurisdiction in such matters. Also, while customs authorities were obliged to notify trademark owners whose rights may have been infringed when suspected counterfeit goods were seized, they could not name the importer or the intended recipient. These provisions prevented trademark owners from being able to cite the defendant(s) and, therefore, unable to easily obtain a declaratory judgment as to whether the goods were counterfeit.

Pursuant to Amendment 260/2002, customs authorities now must (i) notify trademark owners of the name and address of the importer of the suspected goods, and (ii) take measures to prevent the release of the seized goods. To facilitate the latter provision, customs authorities are permitted to determine whether the seized goods are counterfeit. In undisputed cases, they may order the goods to be destroyed without the need for a court order.

In order to achieve uniformity in the interpretation and implementation of the new provisions, the amendment provides that a central Customs Office is to be established to handle trademark owners' applications for information.

While Amendment 260/2002 is welcome, two important issues remain. First, does it allow trademark owners to request an inspection of specific future import shipments? Second, do the new provisions apply only when counterfeit goods are discovered by customs authorities upon routine inspection?

Karel Cermák, Cermák Horejs Myslil, Prague