Problems of new Customs trademark registration system highlighted


A roundtable entitled "Analysis on the implementation of the new trademark recordation system with Customs" has highlighted issues linked to the implementation of Resolution 101, which regulates the procedure for trademark registration with Customs in Paraguay (for further details please see "Customs trademark registration procedure implemented").

In the context of the government's initiative for the fight against piracy and counterfeiting, Paraguayan Customs introduced a procedure for the registration of trademarks and other IP rights on January 15 2008. The introduction of this registration procedure was in line with the requirements of the Agreement on Trade-Related Aspects of Intellectual Property Rights (for further details please see "Customs trademark registration system introduced").

Resolution 101, which was issued on February 22 2008, has raised concerns with regard to several issues, including:

  • the timeframe for requesting the suspension of the clearance proceedings (within 12 hours of the filing of the customs declaration); and

  • the timeframe for requesting that the court extend the suspension of the clearance proceedings and order the inspection of the goods (an additional six hours).

The roundtable, which was organized by Paraguayan Customs and the International Trademark Association, and was hosted by The adidas Group and Berkemeyer Attorneys & Counselors, attempted to highlight and address these concerns. The following parties attended the roundtable:

  • the general director of Customs;

  • a senior IP prosecutor;

  • a criminal judge with experience as an IP agent;

  • a representative of the Paraguayan Trademark Agents Association;

  • a representative of The adidas Group in Paraguay; and

  • other interested parties.

The main issues discussed during the roundtable were as follows:

  • The new Customs trademark registration system is a positive step in the fight against counterfeiting and piracy in Paraguay. The new system is supported by the international community and trademark owners.

  • The general director of Customs emphasized that counterfeiting is a criminal activity and constitutes tax evasion.

  • The activities of the customs authorities, the judiciary and the Prosecutor's Office, among others, must be coordinated in order to 'give one voice' to the Paraguayan government.

  • The customs authorities are open to discussion in order to improve the implementation and/or enforcement of Resolution 101.

  • The support of trademark owners is important. Training material provided by trademark owners was distributed to the IP Department of Customs and the audience during the roundtable.

It is expected that a second roundtable will be organized in the near future.

Hugo T Berkemeyer, Berkemeyer Attorneys & Counselors, Asuncion

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