Border measures: a solution in Saudi Arabia

Among these, are the special requirements related to border measures. The Saudi Arabian Ministry of Finance has adopted border measures for protection of trademarks and copyrights. Said measures were issued in 2004 and, according to government sources, the measures are in line with Section 4, Part III of the TRIPS Agreement.

Under these measures, Saudi Customs Authorities are authorised to act ex officio and, provided there is prima facie evidence, have the power to suspend clearing of goods suspected of bearing imitated trademarks or works suspected of pirating copyrighted work. Customs will then, in compliance with Articles 51 and 52 of the TRIPS Agreement, notify the importer and rights holder of any suspension.

Further, the customs authorities will forward samples of the imported goods to the competent officials at the Ministry of Commerce and Industry, and pirated copyrighted works to the competent officials at the Ministry of Culture and Information. The respective ministries may suspend the clearance of the goods or works once they have identifi ed evidence of infringement, and will notify the customs authorities, the importer and the rights holder of the suspension.

The suspension of goods or works has to be effected without prejudice to the protection of confidential information. In compliance with Article 57 of the TRIPS Agreement, the rights holder and importer may inspect samples of the suspended goods or works in order to confirm the claim of the competent authorities.

Article 4 of the measures grants the customs authorities the right to ask the trademark owner to provide, free of charge, any information or assistance, including technical know-how and facilities, in order to determine whether the suspended goods are counterfeits.

Article 6 covers preventive measures and entitles the trademark owner to the right to seek the issuance of a judicial order by the Board of Grievances (the Court) to seize the goods or works and suspend their clearance by the customs, in accordance with the procedures and conditions set forth in Article 49 of Trademarks Act and Article 22.7 of the Copyright Act.

This order can be sought at any time, even before the filing of a civil or criminal lawsuit, on the basis of a petition supported with an official trademark registration certificate.

Under the measures, the seizure of goods or works may be based on either a judicial order issued by the Board of Grievances or a preventive seizure decision issued by the Ministry of Culture and Information.

The customs authorities have to seize the goods or works and the party against whom the preventive seizure order has been issued may, within 10 days of notification, file a request with either the circuit handling the case at the Board of Grievances or the competent body at the Ministry of Culture and Information to review it, either by revoking or upholding it.

However, a preventive seizure order issued by the Board of Grievances or the Ministry of Culture and Information shall be deemed null and void unless the rights holder follows it by filing a civil or criminal lawsuit against the other party, within 10 days of its issuance.

If the rights holder does not submit proof of filing a civil or criminal lawsuit with the Board of Grievances or with the competent body at the Ministry of Culture and Information, the customs authorities will clear the seized goods or works, as long as other conditions of import and export are met.

The customs authorities are entrusted with enforcing judgments and decisions issued by the competent body for the confiscation or destruction of infringing goods and works, and have the power to dispose of these goods through non-commercial outlets unless instructed otherwise by judicial or administrative authorities.

Furthermore, the customs authorities will not allow the re-exportation of counterfeited trademark goods in an altered state or subject them to a different customs procedure, other than in exceptional circumstances.

Finally, Article 13 states that the parties concerned may contest decisions issued by the customs authority, regarding the application of these procedures, before the Board of Grievances within 60 days of notification in writing or through publication if notification is not possible.

It is now possible to file information with customs proactively concerning the identification of genuine products and distinguishing fake or look-alikes at the border. Filing proactively and requesting monitoring at borders has proved to be one of the most effective ways to curb counterfeits.

Following the signing of a memorandum of understanding with the customs authority, we have filed information on behalf of our clients, and we liaise with the customs authority in relation to a significant number of seized counterfeit goods shipments. For the purpose of filing proactively, the following documents are usually filed:

• A power of attorney from the trademark owner.

• A list of registered trademarks of the trademark owner in Saudi Arabia.

• A list of all authorised subsidiaries, distributors and agents worldwide, if any.

• A list of authorised freight forwarders used by the trademark owner or its subsidiaries, distributors and agents, if any.

• A list of active factories and facilities used by the trademark owner or its licensees, if any.

• Information about probable fake products and how these fake products can possibly be distinguished from the original products.

• Any other information deemed necessary for the distinctive identification of the original product.

The submission of the above information is not mandatory. However, it will greatly increase the chances of seizing shipments of fake products and will assist the customs officials to identify fake products easily. For example, if a client has no operations in a certain country and a shipment indicates that the source of goods is from that country, then the Saudi customs official will have a reason to suspect and check the goods.

To leverage efforts against counterfeit products or pirated copyrighted works coming through the Saudi borders, Saudi customs has opened doors for partnerships with IP holders and their local legal agents. Under such partnerships, IP holders and/or their legal agents are allowed to provide assistance in confirming the status of the suspected goods or copyrighted works.

Trademark-specific training, which is delivered by the trademark owner or agent to customs inspectors, is another product of partnership between customs and the trade sector in combating counterfeits.

These partnerships have also been put into practice. When customs suspects a shipment of goods, based on material that is lodged by an IP owner, customs sends a notification and samples of the suspected goods to the IP owner’s local legal agent. After expert examination of the samples, the IP owner produces a written statement confirming whether or not the sample goods are counterfeit and forwards it to the legal agent. The legal agent then produces a cover letter enclosing the IP owner’s statement and other necessary documents and files it with customs.

It should be noted that the timeframe for executing these steps is 10 days. If the goods are confirmed as counterfeits, the legal agent will be able to obtain information about the shipment from customs, including the importer’s identity, the exporter’s identity, the port of shipping and discharge, and the quantities of goods and packaging details.