Customs restrained from releasing Chanel fakes
In Chanel Limited v Kim [2007] FCA 2076 (20 December 2007) the applicants (Chanel) sought an order to restrain the Chief Executive Officer of Customs (Customs CEO) pursuant to s 137(5) of the Trade Marks Act 1995 (Cth) (Act) from releasing a consignment seized by the Customs CEO on 19 September 2007 pursuant to s 133 of the TM Act comprising 100 scarves bearing the ‘CHANEL’ trade mark or Chanel’s ‘Crossed C’s Device’ mark. The consignment was seized on the ground that, in the opinion of the Customs CEO, the scarves had applied to them a sign that was substantially identical with, or deceptively similar to, a registered trade mark.
A question of construction arose on ‘an internal inconsistency, or at least infelicity’, (para 27) in the language of s 137(5) , which states:
‘If, after 20 working days from the day on which the action was brought, there is not in force at any time an order of the court directed at the Customs CEO preventing the goods from being released, the Customs CEO must release the goods to their designated owner.’ (Emphasis added)
The Court held that the sub-section is not intended to preclude the Court from making an order preventing the Customs CEO releasing seized goods even after the expiration of the 20 day period and that an order preventing release of the goods may be made and come into force ‘at any time’ after the expiration of the 20 day period.
So what?
Be aware that the Customs seizure process is date driven: an action for infringement must be brought within 10 days of receiving a notice from the Customs CEO, or -- if an extension is applied for before the end of the notified period -- within any extended period granted by the Customs CEO. An order should then be sought to be granted within the 20 day period after the proceedings issue.
As Justice Sackville pointed out (at para 28), the usefulness of a Court order after the expiration of the 20 day period depends upon the Customs CEO not having complied with his or her statutory duty to release the goods in a timely fashion. No point seeking an order after the goods are released. The case ended happily for Chanel this time, but only a thrill-seeker would wait until after the 20 day period expires for an order to be granted.
Oh my! Is that the time already? Happy New Year.
