Ex officio border measures implemented

Peru

Pursuant to its obligations under the Free Trade Agreement with the United States, the Peruvian government has implemented ex officio border measures, which came into force on February 1 2010.

The new provisions (approved by Resolution 029-2010/SUNAT/A, dated January 28 2010) reiterate the ex parte border measures set forth by Legislative Decree 1092, Supreme Decree 003-2009-EF and Customs Resolution 043-2009/SUNAT/A. The provisions also introduce the possibility of filing ex parte actions electronically. Resolution 029-2010/SUNAT/A revoked Resolution 043-2009/SUNAT/A almost in its entirety, but did not introduce substantial changes with regard to ex parte proceedings.

The more relevant aspects of Resolution 029-2010 are as follows.

First, Customs may select goods for inspection based on information available in the Voluntary Registry, which is provided by trademark or copyright owners, or by the Trademark Office. Moreover, Customs may decide to inspect goods that are presumed to be counterfeit, pirated or confusingly similar to goods protected by IP rights.

Under Resolution 029-2010, a 'pirate good':

  • is the unauthorized copy of a work that is protected in the country in which it was manufactured; and
  • infringes copyright or related rights under the laws of the country in which it was imported.

A 'counterfeit good' is defined as any product, including its packaging, bearing a trademark which is identical to a trademark validly registered for similar goods, or whose dominant characteristics are identical to those of a registered trademark, and thus violates the rights of the trademark owner in the country of importation.

A 'confusingly similar good' is defined as any product which:

  • displays one or more characteristics of a validly registered trademark;
  • is likely to cause confusion among consumers as to the origin of the goods; and
  • takes unfair advantage of the reputation of the registered trademark.

Second, if Customs has reason to presume that the goods are counterfeit, pirated or confusingly similar to goods protected by IP rights, it may order the suspension of clearance of the goods. Customs must notify the rights holder that clearance has been suspended. The holder then has three working days to demonstrate that it has filed an infringement action before the competent authority. Customs must also notify the Trademark Office. A 10-day extension will be available if the rights holder can prove that it has filed an infringement action within the relevant period. 

The suspension of clearance will be lifted in the following cases:

  • The rights owner has failed to demonstrate that it has filed an infringement action before the competent authority within the relevant three-day period;
  • The competent authority has not issued precautionary measures in order to seize the goods within 10 working days; and 
  • The competent authority has determined that the goods at issue were not counterfeit, pirated or confusingly similar to goods protected by IP rights.

Moreover, under Resolution 029-2010, rights owners must provide a bond, guarantee or promissory oath in order to compensate for potential damages suffered by the importer as a consequence of the suspension. However, the language of Resolution 029-2010 is not entirely clear as to whether the obligation to provide a bond, guarantee or promissory oath also applies to ex officio border measures. This issue should be clarified in the near future.

A bond, guarantee or promissory oath must have a duration of no less than 30 calendar days and must remain effective during the duration of the suspension, or the duration of the administrative or judicial proceedings. The bond, guarantee or promissory oath must amount to no less than 20% of the free-on-board (FOB) value of the goods at issue. If the merchandise is perishable, the bond, guarantee or promissory oath must be equivalent to 100% of the FOB value of the goods. The rights holder is not required to provide a bond, guarantee or promissory oath if it has already provided a guarantee when filing the infringement action.

Customs will accept a promissory oath (instead of a bond or guarantee) only from:

  • public sector entities;
  • institutions of international cooperation;
  • non-governmental organizations for national development; and
  • non-profit private entities which have received donations of an educational or welfare nature and are registered at the relevant registry.

In addition, Resolution 029-2010 expands the type of information that rights holders must provide to obtain registration of their IP rights in the Voluntary Registry. Rights owners must now include in their applications:

  • a specific and detailed technical description of the rights to be protected; and
  • any additional information which might facilitate Customs action (eg, data regarding trends in counterfeiting, the country of manufacture, the country of origin, the transport routes used and the technical differences between genuine and counterfeit goods).

The electronic filing of ex parte border measures is scheduled to enter into force in October 2010.

José Barreda, Barreda Moller, Lima

Unlock unlimited access to all WTR content