Victoria Espinel, US Intellectual Property Enforcement Coordinator, has announced that US Customs & Border Protection (CBP) is now free to share information with trademark owners as part of its efforts to identify potentially infringing products.

WTR previously reported on proposals to ease restrictions on the pre-seizure sharing of information regarding potential counterfeit goods by US CPB, with one concern identified as potential liability under the Trade Secrets Act. The discussion centred on the Currency Exchange Rate Oversight Reform Act, but the latest move comes following the passage of the National Defense Authorisation Act 2012.

The act includes measures to address counterfeit military products, and contains language on trade secret information sharing because of concern over counterfeit electronics infiltrating the supply chain of the Department of Defense. An amendment to the underlying bill by Senators Levin and McCain also broadened the language to cover all counterfeit goods entering the United States and subject to CBP inspection.

The act states: “If United States Customs and Border Exports and Protection suspects a product of being imported in violation of Section 42 of the Lanham Act, and subject to any applicable bonding requirements, the Secretary of the Treasury may share information appearing on, and unredacted samples of, products and their packaging and labels, or photographs of such products, packaging, and labels, with the rights holders of the trademarks suspected of being copied or simulated for purposes of determining whether the products are prohibited from importation pursuant to such section.”

The Interim Final Rule was published in the Federal Register implementing Section 818(g) of the National Defense Authorisation Act yesterday, and allows “CBP, subject to limitations, to disclose to an intellectual property right holder information appearing on merchandise or its retail packaging that may comprise information otherwise protected by the Trade Secrets Act, for the purpose of assisting CBP in determining whether the merchandise bears a counterfeit mark”.

With the amendment published, Espinel stated: “Effective immediately, CBP can begin sharing information with trademark holders. This will assist CBP in making independent infringement determinations and provide a badly needed mechanism and authority that will assist in weeding out fake products with counterfeit marks. CBP has informed me that they are issuing guidance to field offices, ports and personnel today. Inspectors at ports of entry will begin implementing this policy immediately.”