Since the Trade Marks Act No. 8 of 2015 (the “Act”) came into force at the end June 2020, there have been some movements in the right direction in the fight against the influx of counterfeit goods into the jurisdiction.
The Act governs anti-counterfeiting activity, and now provides for increased border enforcement measures against counterfeit goods either entering or leaving the jurisdiction. As it relates to trade mark infringement, there are now clearer definitions under the new trade mark legislation as to what constitutes infringing goods, counterfeit trade marks and counterfeit goods. Both civil remedies and criminal sanctions continue to be available under the Act, with criminal sanctions and penalties having been enhanced somewhat.
Under the Border Enforcement Regulations under the Act, regulating authorities like Customs & Excise now have a greater role to play in enforcement of intellectual property rights. Customs & Excise now has the power to conduct ex officio actions to detain goods on reasonable suspicion that they are counterfeit and subsequently seize counterfeit goods on confirmation by rights holders.
During 2021, there have been quite a number of seizure actions conducted by Customs & Excise, primarily in the retail sector. These have led to the destruction of approximately over 16,600 counterfeit items over the period. These actions have also resulted in a number of ongoing trade mark infringement matters currently before the courts.
In summary, there have been some encouraging signs in 2021 in terms of the level of activity in dealing with anti-counterfeiting actions for trade mark infringement.
Moving forward, it is hoped that in the near future there will be further development to support Customs & Excise through the implementation of data recordal systems and systems to track statistics and counterfeit routes for Customs & Excise. Additionally, the expansion of regulations and protection against counterfeiting activity in local Free Trade Zones which continue to be vulnerable to the abuses by criminal actors in the zone, would be welcomed.