ABPA 2019 meeting- Westin Fort Lauderdale

www.gray-robinson.com


1. CBP Detentions and Seizures of Imported Merchandise for Alleged Counterfeiting

2. Violating ITC Orders

Topics


Peter Quinter, Attorney

Customs & International Trade Law Group

GrayRobinson, P.A.

Mobile (954) 270-1864

Office (305) 416-6960

[email protected]

Skype: Peter.Quinter1

www.gray-robinson.com 4

Questions??


“NAFTA is the worse trade deal ever.”


Counterfeiting Perceptions


1. Counterfeit Marks

Pursuant to Title 15, United States Code, section 1127 (15 U.S.C. §1127), a counterfeit mark is defined as a spurious mark that is identical with, or substantially indistinguishable from, a federally registered and recorded trademark. Merchandise imported into the United States bearing marks “counterfeit” of a federally registered trademark recorded with CBP shall be seized and forfeiture proceedings instituted pursuant to Section 526(e) of the Tariff Act of 1930 (19 U.S.C. §1526(e)), as implemented by 19 CFR § 133.21. Such merchandise shall be seized and, absent the trademark owner’s written consent to import the merchandise, forfeited for violation of customs laws.


2. Copying or Simulating Marks

In addition, pursuant to 15 U.S.C. § 1124, as implemented by 19 CFR § 133.22, a copying or simulating mark or trade name is one that so resembles a recorded mark or name as to be likely to cause the public to associate the copying or simulating mark or name with the recorded mark or name. Merchandise bearing a copying or simulating mark is subject to detention and possible seizure.


3. Restricted Gray Market Articles (“Parallel Imports”)

Gray market goods are defined as foreign-manufactured goods bearing a genuinetrademark or trade name identical with, or substantially indistinguishable from, oneowned and recorded by a citizen of the United States or a corporation or associationcreated or organized within the United States which are imported into the U.S. without theauthorization of the U.S. trademark owner. In other words, gray market goods aregenuine products bearing a trademark/name which has been applied with the approval ofthe right owner for use in a country other than the United States. Goods bearingcounterfeit marks, on the other hand, are never genuine as these are marks (identical to

or substantially indistinguishable from the genuine trademark) which have been applied

without the authority of the trademark/trade name owner.


Intellectual Property Rights

• Is your merchandise or its packaging using any trademark, copyright or patent?

• If so, do you have the legal right to import those items into, and/or use those items in, the United States?

• Permission?

• License?


Recordation With Customs

• Only $190 –

– CBP is YOUR POLICEMAN!!!!

• IPR Branch

• Copyright/Trademark Application Template


Trademark Recordation Application Template

• The names and principal business addresses of any business entities, foreign or domestic, who use the trademark and a description as to those use(s).

• Provide the name, address, telephone number, facsimile number, and email address of the contact person to whom CBP should send inquires regarding potentially infringing merchandise and notices of detention and seizure pursuant to 19 CFR 133.24.


Trademark Recordation


UL Trademark- TMK 13-00196


How a Typical Seizure Case Commences with U.S. Customs and Border

Protection:

• CBP Suspects a violation, and places the merchandise on hold for “intensive

examination”.


CBP Detention Notice

• 19 C.F.R. 151.16

– (e) “A final determination with respect to admissibility of detained merchandise will be made within 30 days from the date the merchandise is presented for Customs examination”

– (f) “Effect of failure to make a determination. The failure by Customs to make a final determination with respect to the admissibility of detained merchandise within 30 days after the merchandise has been presented for Customs examination, or such longer period if specifically authorized by law, shall be treated as a decision by Customs to exclude the merchandise for purposes of section 514(a)(4)”



How a Typical Seizure Case Commences with CBP:

• U.S. Customs (Fines, Penalties & Forfeitures Office) issues a Seizure Notice

• When, where, why, what

• How, where, and when to respond


What Type of Merchandise is Subject to Seizure?

• Prohibited Merchandise (counterfeit, controlled substances)

• Restricted Merchandise (CPSC, FDA, Quota)

• Undeclared, unreported or smuggled merchandise (non-reporting of currency over $10,000)

• Goods which aid or facilitate the illegal importation of merchandise


What Should be Done Upon Receipt of a Detention Notice or Seizure Notice?

• During the detention process, establishing proof of compliance with U.S. law avoids seizure of the merchandise, administrative delays, and related costs.

• Critical stage to get legal counsel involved.

• Administrative petition process for seizures can take months to resolve before medical devices returned.


Fines by CBP

In accordance with 19 CFR § 133.27, CBP, as authorized by 19 U.S.C.§ 1526(f), may impose a civil fine relative to seizures effected formerchandise bearing counterfeit marks pursuant to 19 U.S. §1526(e). For the first seizure of such merchandise, the fine shall be nomore than the domestic value the merchandise would have had if itwere genuine, based upon the manufacturer’s suggested retail price(MSRP) at the time of seizure. For second and subsequent violations,the fine shall not be more than twice such value.





ABPA Position Statement Against Proposed Section 232 Tariffs

ABPA Advocacy, News June 20, 2018

[W]e oppose all tariffs targeting the automotive industry and specifically imported auto parts because ultimately, they severely diminish free enterprise and competition establishing undesirable domestic monopolies that would compound the impact of the tariffs on Americans.

Below are specific details on how the tariffs would affect American consumers, the US economy and our national security interests.

Aftermarket Replacement Parts – … If these proposed tariffs are implemented, then the added costs would be passed on to the consumer. A study completed by Microeconomic Consulting & Research shows a $1.5 billion dollar per year benefit to consumers because of the competition in the auto body parts industry.

Price increases to OEM Service Parts – One of the biggest confusions in the automotive industry is that the components for the OEM service parts being supplied to the US car companies (i.e. the “Big Three”) are locally produced when they are in fact sourced from all over the world. They then combine them with other components claiming they are “US produced” but actually they are just “US assembled”. The proposed tariffs will result in higher prices for the OEM service parts – not just their aftermarket equivalents.

Ultimately, we believe these proposed tariffs would not improve the automotive industry, would cause the loss of thousands of American jobs, not improve US homeland security and will hurt American consumers. We would ask that the administration not move forward with these tariffs and work with our international trading partners in other ways to protect our economy and country.


Counterfeit vs. Alternative Parts

ABPA News, Press Releases June 9, 2014

ABPA Encourages Consumers to Understand the Difference Between Counterfeit and Alternative Parts

An article was recently published by Joshua Dowling titled “New Safety Fears Over Counterfeit Parts”. Mr. Dowling brings up the important safety issue of counterfeit airbags and the danger they impose upon motorists across the world.

The concern we have with the article is the multiple use of the phrases “counterfeit parts” and “bogus parts”. There is a definitive difference between counterfeit parts and alternative parts and we feel obligated to be sure all parties understand the difference. Counterfeit partsare those parts manufactured and intentionally packaged to mislead the consumer into thinking they are buying a specific brand of parts although they are not such brand. Alternative parts are parts which have been designed and manufactured as a replacement part to the brand named parts providing the consumer a choice, usually at a substantial savings, to the brand name parts.

In the US, alternative collision parts represent approximately 15% of the market and are endorsed by insurance companies, consumer groups and repair associations, as long as they are warranted for fit form and function. These parts are not “counterfeit” or “bogus” parts – they are legitimate alternatives to the monopolized car company service parts which save the motorist millions of dollars each year.


Section 337 Investigations

U.S. International Trade Commission (ITC) investigations most often involve claims regarding intellectual property rights, including allegations of patent infringement

and trademark infringement by imported goods.

The primary remedy available in Section 337 investigations is an exclusion order that directs U.S. Customs to stop infringing imports from entering the United States. In addition, the Commission may issue cease and desist orders against named importers and other persons engaged in unfair acts that violate Section

337.

Section 337 investigations, which are conducted pursuant to 19 U.S.C. § 1337 and the Administrative Procedure Act, include trial proceedings before administrative

law judges and review by the Commission





Documents

ABPA 2019 meeting- Westin Fort Lauderdale