How Mauritius’ customs protection and surveillance system safeguards IPR

The Mauritius authorities devised an administrative system operated under the aegis of the director general of the Mauritius Revenue Authority (MRA) to fight against the waves of products that are not authentic or genuine and consolidate the enforcement of intellectual property rights (IPR). In practice, the system is managed by the IPR unit of the MRA’s Customs Department.

The national laws do not provide for a definition of counterfeiting and therefore this article will refer to fake products or imitations of genuine goods.

One of the most important points to consider for brand owners is that the national laws allow for the prohibition of parallel imports; i.e., the importation of genuine products from foreign countries can be controlled by the trademark proprietor or licensee.

This explains why so many distributors urge – rightfully – the brand owners or licensees to record their trademarks with Customs, as this is a very practical way to be recognised and listed as an official distributor or supplier in the country.

Indeed, once a trademark is registered at Customs level, the owner has the possibility to issue a list detailing all the suppliers/distributors that can bring genuine products into the country.

One aspect that is often overlooked for brand owners is the fact that exports can also be monitored through the same mechanism by having Customs monitor manufacturers’ outgoing shipments of genuine products such as fashion items.

The Mauritius Customs can therefore check all points of entry in both directions, depending on the instructions given by the brand owner in its application for border protection and surveillance.

For exporters and importers alike, this is a positive aspect as they see their investments and efforts protected with the support of the brand owner, although the list of authorised importers/exporters is not made available to the public.

The IPR unit has devised an application that requires three essential documents:

• Proof of ownership of the trademark rights;

• Authorisation to represent and act in the name of the trademark owner; and

• A minimum security – the amount varies depending on the types of products and the minimum amount is always MUR 20,000.

Applications can be filed by submitting original documents at Customs House in Mer Rouge, Port Louis. There is no online application portal.

For the time being, there are no official fees to be paid to the IPR unit.

After an application is submitted, and provided that all documents listed above have been included as part of the application, an approval will be issued within seven working days from the date of receipt.

Concretely, the documents accepted are as follows:

• An official database extract from the Industrial Property Office of Mauritius;

• A power of attorney duly registered by a local notary in Mauritius; and

• A bank guarantee.

Once the application is approved, the list of authorised importers/exporters can then be submitted for recordal in the internal database of Customs.

As indicated beforehand, all applications that are approved are published online so that the information is made available to the general public and all details of the agent representing the trademark owner can be found for the next two years. Renewal is then required.

From the date of the public notice, only a certain set of exceptions will allow unauthorised shipments to avoid a suspension of clearance from Customs; in particular, the usual case of small quantities of goods of a non-commercial nature, intended for personal use.

After registration and approval by Customs, the local customs officers will inspect and seize any suspected infringing goods based on the training and information provided by the agent of the trademark owner.

For goods that are temporarily seized, the local customs office will issue a notice to the agent of the trademark owner, requesting whether the goods are to be released or their detention maintained.

Time is of the essence as cases must be settled within 10 working days. This short timeframe means that an agent must be ready and act swiftly.

First, the agent must inspect the goods and confirm if they are genuine or authentic.

Then, in the event that the goods are not authorised or are imitations of genuine goods, the agent must diligently approach the importer to find an amicable solution. Samples can be taken as well as photos.

Negotiations must be concluded quickly and if no positive outcome can be reached within this extremely short period, the only solution is to initiate legal proceedings.

Cases in Mauritius can last several years and executing a judgment costs a lot in terms of time, effort, and money spent.

Taking into account that until a favourable judgment is delivered by the court, it is the responsibility of the trademark owner to cover the rent charges imposed by Customs, it is always recommended to settle matters amicably.

There are two possibilities to handle border protection:

• The first is to adopt an attack mode by actively feeding information to the Customs officers and collaborating closely with the IPR unit to move on the ground. Operations such as raids of warehouses often require communication to be kept to a minimum and involve only the agent and one or two trusted officers to avoid leaks and products mysteriously disappearing from incoming shipments, for example.

• The second is more like a defence strategy and merely consists of registering the trademark in the hope that such recordal will force rogue traders to move to other brands and reconsider the situation due to the risks involved. This also means a less rigid approach is taken by only tackling major infringement cases and being selective by targeting big containers or big deals.

To avoid the expiry of customs recordation due to non-renewal or due to the expiry of certain documents, trademark owners should try to maintain the consistency of customs surveillance by having one central agent or by ensuring that the legal team can act as the liaison between the agents listed on the records at the Mauritius IP office and those listed on the records at Customs.

Without coordination and synergy, the enforcement mechanism can be difficult to abide by and will not lead to meaningful results.