Legal and Customs Perspectives on Import and Export Trademark Registration Requirements
The Trade Marks Act of 1999 protects a brand’s identity and seeks to prevent the distribution of illicit and counterfeit goods by granting exclusive rights to the registered trademark owner. The Customs Act of 1962 regulates the import and export of goods, providing the legal framework for border control. The increasing threat of counterfeit and infringing goods entering the market through international trade led to the introduction of the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007. These rules empower customs officers to enforce trademark rights at the border by identifying, seizing, and disposing of infringing goods, thereby safeguarding the economy and preventing financial and economic harm to brand owners.
Mechanism for Enforcement of Trademark Rights by Customs Authorities
Under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, trademark rights are enforced at the border through the following mechanism:
- Record of Intellectual Property with Customs
The IP owners can register their intellectual property with Customs authorities through an online platform managed by the Central Board of Indirect Taxes and Customs (CBIC). This platform facilitates the surveillance and confiscation of infringing goods. The technology helps prevent the unlawful or counterfeit movement of goods and services across international borders. However, simply registering a trademark under the Trade Marks Act of 1999 does not automatically grant Customs the authority to take action until the recordation process is complete.
To submit an electronic application, including trademark details and evidence of registration, the IP owner must use the designated website. After generating a Unique Temporary Registration Number (UTRN) and submitting it to the IPR section of the Custom House within 30 days, a Unique Permanent Registration Number (UPRN) will be issued as the final proof of intellectual property rights registration.
- Detention of Suspected Good
The customs officer has the authority to seize goods suspected of infringing registered trademarks once the trademark registration process is complete. Additionally, Customs notifies the importer, who must provide evidence verifying the legitimacy of the products. If customs officers suspect a violation of a registered trademark, they are empowered to halt the clearance of the imported goods.
- Notice to Right Holder and Importer
Once the infringing articles have been identified, customs officials notify both the importer and the rights holder. A notice of suspension is issued by the Deputy Commissioner of Customs, detailing the commodities being detained, the values of the products in violation, and information about the importer.
- Adjudication and Disposal
If the importer cannot verify the legitimacy of the goods and an infringement is established, customs authorities will investigate the matter, seize, confiscate, and destroy the infringing items.
According to the Customs Act of 1962, this legislation helps keep counterfeit items out of the market. By intercepting infringing goods at the border, customs enforcement serves as a preventive measure in addition to the remedies provided under the Trade Marks Act of 1999.
Whether Trademark Registration in India is Mandatory for Import of Goods into India
Trademark registration is not required for the importation of products into India. According to Indian import laws, owning or possessing a registered trademark is not a prerequisite for lawful importation. However, only registered trademarks can be enforced at the customs level against infringing goods.
Statutory Framework
The Central Government may restrict or prohibit the importation of goods to safeguard intellectual property rights, as stipulated in Section 11 of the Customs Act, 1962. Specifically, Section 11(2)(n) authorizes the restriction of goods to protect patents, designs, trademarks, copyrights, and geographical indications. Furthermore, Section 11(2)(u) enhances enforcement by allowing prohibition to prevent violations of any existing legislation.
In 2007, the Central Government exercised this authority under Section 11 by issuing Notification No. 49/2007, which officially prohibited the import of products infringing intellectual property rights, subject to certain conditions. This notification directly led to the establishment of the IPR (Imported Goods) Enforcement Rules, 2007.
Under these regulations, only registered trademark owners or their authorized licensees may request customs enforcement. To record a registered trademark, the trademark owner must submit a notice to Indian Customs in the prescribed manner. Once a trademark is registered, customs authorities have the power to halt the clearance of imported goods suspected of infringing the registered trademark.
Thereafter, Notification No. 51/2010-Customs (NT), dated June 30, 2010, came which was subsequently amended by Notification No. 57/2018-Customs (NT), dated June 22, 2018, introduced online IP recording (UTRN to UPRN), simplified the requirements for bank guarantees and security bonds, and established strict deadlines for right holders to confirm infringement after detention. Importantly, trademark registration remains necessary only for customs enforcement and not for determining the legality of imports. These changes were procedural streamlining measures rather than substantive statutory modifications.
Legal Position Clarified by Judicial Precedent
Indian courts have generally held that the importation of genuine goods bearing a brand is not inherently illegal, even when a trademark is registered in India, provided there is no substantial alteration, fraud, or misrepresentation. Customs authorities are not authorized to detain goods solely because the importer is not the trademark owner or licensee.
Judicial Interpretation of Customs Enforcement and Trademark Registration
In the case of Western Digital Technologies Inc. v. Hansraj Dugar,[1] the registered proprietor of the trademark WESTERN DIGITAL had registered it with Indian Customs in compliance with the IPR (Imported Goods) Enforcement Rules, 2007. Supreme Enterprise imported hard drives bearing the Western Digital emblem. Customs officers detained the goods on the grounds of alleged trademark infringement after the trademark was recorded and the rights holder filed a complaint. The Delhi High Court ruled that the IPR (Imported Goods) Enforcement Rules, 2007, only authorize customs officers to stop the clearance of goods when there is a prima facie allegation of trademark infringement. The Court emphasized that the mere fact that a trademark has been registered with customs does not justify the automatic detention of goods. Customs must exercise its discretion to determine whether the goods are counterfeit or infringing, as well as whether the doctrine of exhaustion applies. The Court ordered the release of the articles subject to specified conditions, ruling that inappropriate or mechanical detention violates legislative safeguards.
In Samsung Electronics Co. Ltd. v. Kapil Wadhwa & Ors.,[2]Samsung sued the defendants for trademark infringement and dilution to prevent them from importing and selling Samsung-branded products in India without a license. The Delhi High Court recognized the principle of international exhaustion of trademark rights, stating that a trademark owner cannot prevent the importation of a product into India if it has been legitimately placed on the market anywhere in the world with the owner’s consent. The Court clarified that the mere illegality of importing genuine goods does not constitute trademark infringement. This case is significant in Indian trademark law concerning parallel imports, establishing that the importation of trademarked goods is not inherently unlawful and that customs officers cannot detain legitimate goods solely based on trademark ownership.
In the case of Xerox Corporation v. Puneet Suri,[3] Xerox Corporation, the registered owner of the XEROX brand, sought to restrict the importation of reconditioned Xerox machines into India. Xerox Corporation complained to the customs officers to detain shipments on suspicion of trademark infringement. However, the Delhi High Court held that importing genuine refurbished goods does not necessarily constitute trademark infringement. The Court emphasized that customs officials must determine whether the goods are counterfeit or confusingly similar, rather than prohibiting importation solely because the items are refurbished or imported without permission. This decision narrows the scope of customs enforcement and reaffirms that customs jurisdiction is preventive rather than prohibitive, except in cases of clear violations.
[1] Western Digital Technologies Inc. v. Hansraj Dugar CS(COMM) 586/2019 dated 16th May 2025
[2] Samsung Electronics Company Limited & Anr. v. Kapil Wadhwa & Ors., C.S. (OS). No.1155/2011 dated 17th February 2012
[3] Xerox Corporation v. Puneet Suri, CS (OS) No. 2285/2006 dated 20th February 2007
-Priyanka Dey, Ductus Legal
DUCTUS EDGE 