This IP First Response website has been designed to help IP rights holders navigate IP infringement and enforcement by making it visible, accessible, and to provide information about the factors involved in pursuing different options. It does not provide legal, business or other professional advice, and none of the content should be regarded as recommending a specific course of action. We welcome any feedback via our IP First Response feedback form and by emailing us.
What is it?
A Notice of Objection gives the Australian Border Force (ABF) permission to seize imported goods that are suspected to infringe on your trademark and are intended for commercial purposes. Without this legal document, the ABF cannot seize imported items that may violate your intellectual property rights. However, with your formal approval, even a single item that meets the criteria can be seized.
If the importer affirms the legitimacy of the seized goods and requests that they are released, it is your responsibility to contest this claim and begin legal proceedings within 10 days. If you do not take legal action, the goods will likely be released back to the importer.
The scheme works better if you keep ABF informed about potential unapproved importation, red flags and recommended ways to spot counterfeits of your product(s). Despite the administrative burden, it is also recommended that you update the ABF when any personal, business or IP information is added or amended. To ensure the ABF’s registry contains only actively used trade marks, you are required to re-lodge the notice every 4 years to continue your protection.
Please Note: A Notice of Objection cannot act retrospectively for goods that have already been imported.
What are the benefits?
- Acts as a deterrent for anyone who tries to import goods that infringe on your trade marks.
- When caught, the vast majority of infringing importers abandon their goods.
- No financial cost to lodge the Notice itself.
- Provides a way to intercept infringing imports.
What are the risks?
- You must agree to pay for costs incurred by the ABF which might result from the seizure of potentially infringing goods. Generally, costs are minimal.
- Failure to identify importers within your own supply chain may result in the seizure of your own imported goods
- This action does not permanently resolve the issue of your goods being counterfeited.
- It doesn’t take much for matters to escalate to court, potentially introducing higher risks and costs.
- Escalation of the dispute could require you to defend reaffirm your claim to your IP rights.
What are the possible outcomes?
- The goods are not detected entering Australia, or goods are detected but cannot be verified as potentially infringing; you are not notified.
- The goods are seized entering Australia. You and the importer are informed.
The importer may then:
- choose to abandon the goods which are then disposed of by the ABF
- file a Claim for Release of Seized goods form.
If they submit this form, one of two things can happen:
- You do not begin legal proceedings within 10 days and the goods are released to the importer
- You begin legal proceedings within 10 days.
The court’s decision will likely result in either:
- the ABF disposing of the goods, or
- the goods being released back to the importer.
What might the cost be?
While there are no fees to lodge a Notice of Objection, you will also need to lodge a Deed of Undertaking. This is a formal agreement to repay the ABF’s costs resulting from any seizures made (e.g. transportation, storage and destruction costs).
If you choose to take legal action against the importer, you will need to cover the costs of the legal action. Depending on the court’s determination you may need to pay other party’s costs, possibly damages, etc.
How much time might be involved?
A Notice of Objection is valid for four years and ABF may seize imports at any point during this time. It can be re-lodged, or withdrawn if it is no longer required.
If a seizure has occurred:
- The ABF will notify you and the importer. The importer has 10 working days to ask for the goods to be released.
- If no response is received, the goods are deemed to be forfeited.
- If the importer seeks to have the goods released, you will be notified and have 10 working days to start legal action against the importer.
- If the ABF does not receive a court order within 20 days of legal action commencing then they are still required to release the goods to the importer.
How much is this used?
This is still being investigated and will be updated as the tool is refined.
Who can use this?
- Owners of registered trade marks which claim goods (services are not eligible for the scheme).
- Authorised users or importers of a trade mark, with the registered trade mark owner’s permission.
Who’s involved?
- Australian Border Force.
- The trade mark owner or authorised user.
- Businesses importing goods for commercial purposes that bear your trade mark or a similar trade mark.
- (Potentially) legal representatives, if you choose to take legal action.
What do you need to proceed?
To lodge a Notice of Objection under the Trade Marks Act 1995, you will require the following:
- A completed Trade Marks Act 1995 Notice of Objection form (B1025)
- Evidence of trade mark registration from IP Australia (for example, a copy of an Australian Trade Mark Search report)
- A completed Trade Marks Act 1995 Security Under Section 133 – Deed of Undertaking form
- If you are an authorised user or importer – an authorisation letter from the registered trade mark’s owner.
You can find more information in the ABF Guide to lodging a Notice of Objection.
To assist in identifying suspected infringing goods you can also provide information on your brand to the ABF. All brand information provided to the ABF is commercially protected and is not released or used for any other purpose.
Before you take any action, you should consider whether you need legal or professional advice specific to your situation. It is important to know what rights you have, what remedies are open to you, and the cost and likelihood of success. IP Australia provides information on getting professional assistance with your IP. In addition, the Institute of Patent and Trade Mark Attorneys Australia (IPTA) offers free 30 minute consultations with an attorney.