The amendment of the Norwegian Customs Act section 39, which was implemented as of September 1 2007, makes it possible for the Customs authorities to notify owners of IP rights if there is probable and reasonable cause to believe that the imported goods are infringing the IP rights. Customs may with this amendment ex officio retain suspected goods for five days and thus give an IP owner the possibility to take action. Before this amendment, it was necessary to obtain an interlocutory injunction from a court in order to enable the Customs to retain suspect goods. The amendment creates a new and better instrument in the battle to fight piracy and counterfeits, making it easier to enforce IP rights. The Norwegian Patent Office will assist the Customs to identify the IP owners, enabling them to notify correctly.

The amendment means Norway is partly harmonized with the EC Regulation 2003/1383/EF. The Customs will now have the opportunity:

• to stop pirate copies based on suspicion only;
• to notify the owner of any IP rights; and
• to retain the suspected goods for five days as from the notification.

It will also be possible for IP holders to notify the Customs about their trade mark and design rights with information about different features identifying original goods and counterfeits, historic dates about counterfeiting, routes and from which countries the counterfeits have originated, normal providers, what to look for when controlling various consignments etc. This means that the Customs will have the possibility to give notice to an IP holder when there is probable and reasonable cause to believe that a consignment under Customs clearance contains pirate copies. This includes both consignments for import and export. Before the new rules were implemented, the Customs were bound by confidentiality about particular consignments. This is now history. Now a consignment containing different products and different brands can be disclosed simultaneously, making it possible for several IP holders to initiate joint actions.

However, a great weakness with the new system is the time limit for retention, which is only five days. This is far too short a time to notify the IP holder and to take action. At least 10 days are often necessary, in many cases much longer. Our experience is that it takes quite some time to get hold of and notify an owner. About 70% of owners of IP rights in Norway are foreigners, and much time is needed to contact the foreign agent, who must get hold of the client and get instructions before any action can be initiated. This means that often it will be practically impossible to take action within five days.

Furthermore, many counterfeit cases would need examination in laboratories to verify whether the products are counterfeit or original. This will often be the case for pharmaceutical and body care products, washing powder, beverages etc. The laboratories or the specialist staff who inspect the goods, are most of the time situated outside of Norway, and the time aspect will therefore be crucial in order to establish evidence.

A court order based on an intermediary injunction will still be the safest way for most IP owners. The further advantage of this procedure is that with a court order the Customs will be obliged to follow the instructions from the court, and will not be relying upon the discretion of a Customs clerk to take actions or not. However, the most important advantage with a court order is that the IP owner will have at least six weeks (which can be further extended) to examine the case, and decide whether or not to take further action. Also from a legal point of view this route will be better to avoid unnecessary actions.

The great problem for Norwegian Customs today, as for most other countries, is lack of capacity and resources. Only very few Customs staff are involved and specialized in the field of anti-counterfeiting. The amendment of the Norwegian Customs Act is a small step forward. However, it will never be a success until the Norwegian government provides more resources and capacity. In order to have the sufficient focus on the problems concerning counterfeiting, these issues have to be solved. Compared to Sweden, Denmark and Finland, Norway still has a primitive position with regard both to resources and commitment to fighting IP piracy.

Sindre-Jacob Bostad

Plougmann & Vingtoft
PO Box 1003 Sentrum
NO – 0104 Oslo
Norway
Tel: +47 22 00 74 30
Fax: +47 22 00 74 39
pv@pv.eu 
www.pv.eu