A border protection of trademark in Rwanda: Challenges and the way forward

Abstract

The Agreement on Trade Related Aspects of Intellectual Property (TRIPS Agreement) recommends an involvement of administrative or judicial authorities in a prevention of trademark infringement that can arise through the importation of goods. The Rwandan intellectual property law (IP Law) provides for a complementarity between courts and the Customs Authority to that end. TRIPS Agreement recommends a destruction of infringing goods as an effective deterrence against trademark infringement. However, it provides also for possibilities of release of goods before a determination on whether goods are infringing or not, and it cautions to take into account the seriousness of the case and interests of third parties. The overall purpose for this article is an analysis of challenges surrounding the border protection of trademark in Rwanda and away forward for better protection. The guiding research questions consist of the question on how to balance between the rights of the importer to have goods released into free circulation and the rights of a trademark holder to have a decided suspension of goods maintained. There is a question of a silence of the law on how many times a court can decide an extension of suspension of release of goods. Moreover, there is a question on how the court should take into account an effective deterrence of the infringer and the rights of third parties in a use of its discretional powers to decide a non-destruction of goods in the substanceof the case. An effective approach to these research questions led to start with an overview on trademark infringement to facilitate an investigation of challenges relating to border measures against trademark infringement, and ultimately, an analysis of challenges relating to remedies in the situation the court deciding the case in substance finds goodsto be infringing. The study finds out that a right of inspection of goods by the right holder after their suspension from release into circulation by the Customs Authority can remove a suspicion on whether goods are infringing, leading to a definite release of the goods. It can also boost confidence for the right holder to go on with the case in substance which should involve an extension of suspension of release of goods to enable a discussion of any court remedy when the court finds the goods to be infringing. Concerning a number of times parties can go to court in the context of extension of suspension of release of goods, the study recommends an amendment of the IP Law to enable a suspension until the case is decided by courts at the final stage, and a complementary solution for the court administration to provide closer dates for cases of border protection of trademark. As to the disposal of infringing goods out the channels of commerce, an alternative to a destruction of infringing goods that puts forward a total disconnection of the goods from the infringer should aim at a channeling of goods that are not sub standards to the population in need. In brief, the article concludes recommending an IP Law amendment and a capacity building for enforcing organs.