Fight against counterfeiting: enforcing design patents at the border

The four main takeaways from the roundtable are:

  1. In the United States, customs officials are authorized by law to seize imported goods that infringe a copyright or trademark in the United States, but not a design patent filed in the United States. This leaves the US as an outlier compared to jurisdictions – like the EU, Japan, Korea, and China – that enforce registered design rights at the border.
  2. Instead, U.S. customs officials can seize goods that infringe the design of the product only if that design is registered as trade dress (a form of trademark) with the Patent and Trademark Office. Registering the trade dress of a product model in the United States can be a lengthy and expensive process that requires the demonstration of a “secondary meaning” which can take several years to demonstrate, while the registration of the same model as a design patent can be carried out immediately and without any such demonstration.
  3. This creates a loophole, allowing goods that infringe a registered design patent to be legally imported for at least several years, unless and until the owner of the intellectual property also succeeds in registering that design as trade dress.
  4. The Counterfeit Goods Seizure Bill of 2019 (S.2987) would fill this gap by expressly adding “design patents” to the relevant Customs Act, 19 USC § 1595a (c) (2) (C), this that would make U.S. border law enforcement consistent with the many other global jurisdictions that already enforce registered design rights.

About Candace Victor

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