Goods detained by UKBA due to alleged copyright issues

[Bald]

I ordered 300 unbranded scooters from China which were detained by UKBA 02/11/11 on arrival due to the fact there is an image of the Hannah Montana on the box albiet the scooters inside boxes carry no image. As soon as the shipping agent told me I contacted UKBA and informed them the scooters are unbranded and there had been no request by me to put any such image on the box and I would be willing to put a sticker over image or remove boxes...being UKBA this was not good enough they seized the goods and sent a sample to Disney, I contacted Disney, Disney Lawyer and copied in UKBA explaining that this was simply a mistake in the factory and I would put a sticker over image or surrender boxes. Rollon 20 days this is the answer from Disney's lawyers:

Dear Mr Aitkin

We thank you for your email on 10 November 2011 providing additional information on the goods seized by UKBA on 9 November 2011. After examination of the goods in question we can confirm that the Hannah Montana image on the packaging of the Scooter infringe our client’s intellectual property rights. Our client is prepared to release the goods referenced 071-048055J 26/10/2011 provided:

1. they are separated from the packaging which is to be seized in accordance with trade mark infringement laws and European Regulations; and
2. the cost of this separation is paid for by you.

In order to facilitate this separation, we require you to provide an upfront payment to cover all the costs of the UKBA. We do not know how much UKBA will charge but suggest a figure of £2000.00 is paid directly to our client. In the event that the UKBA charge is more, we would need an undertaking from you stating that you will cover these costs. Of course if the fees are less we will refund the difference.

As a result of the intellectual property infringement our client is entitled to commence proceedings against you immediately claiming amongst other things, an interim injunction preventing the importing, distributing, offering of sale or selling Items, and to have the Items seized permanently by HMRC and ultimately destroyed together with damages (or an account of profits) and legal costs.

We look forward to hearing back from you by 4.00 pm today with confirmation that you have arranged a BACS transfer to the following bank account with reference “636628.07001 – Disney Enterprises – UK Customs”

Royal Bank of Scotland
1 Fleet Street
London
EC4Y 1BD

Sort Code 15-80-00
Client Account Number 64210923

Unless we hear from you by then we will notify UKBA that you have not specifically objected to the destruction of the property in its entirety.

As you can see they have accepted scooters breach none of their copyrights but have demanded £2000 for something I suggested doing 20 days ago! Worst yet I checked with UKBA and they do not charge at all to oversee the repacking of goods. Needless to say I asked Disney lawyer how they got to £2000 consider UKBA dont charge...as yet no answer.

My thinking is I will sit out until seizure allowance expires on 6th Dec as under circumstances it has to be pointless to begin legal proceedings. I am a first time importer, I did not ask for or order the image on the boxes and I have not sold any therefore they can not show intent and or trying to pass off. Any thoughts appreciated...

[AndyJ]

Hi Bald,
That's certainly a first for me. I am not clear why if you make an undertaking to pay for the packaging to be removed and destroyed, they should say it is necessary to transfer the £2000 to Disney, irrespective of the fact that UKBA would not charge for removing and destroying the packaging. I can't help thinking that if you paid over the money, Disney's legal costs would coincidently come to £2000 and you would lose that money.
I suggest you get some professional legal advice as there is clearly a lot of money at stake here (the value of the scooters). A swift letter from your lawyer to the UKBA and Disney should ensure that nothing hasty is done. UKBA cannot do anything other than hold onto the scooters without a court order, and that is a long way off. Assuming you are correct and the scooters themselves do not carry any possible infringing images or words, then they are not liable to forfeit or destruction since they are not infringing items.
Much will depend on whether you can provide any evidence to show that you were unaware that these scooters would come with packaging showing the Hannah Montana figure on it. If you can show that nothing in your dealings with the company you ordered them from indicated this packaging, then you should be in a strong position. Any trade catalogues or other marketing information which you relied on before placing the order could be relevant here.
There are two specific sections of the Copyright Designs and Patents Act 1988 and one under the Trade Marks Act 1994 which might apply here:
CDPA

22 Secondary infringement: importing infringing copy.

The copyright in a work is infringed by a person who, without the licence of the copyright owner, imports into the United Kingdom, otherwise than for his private and domestic use, an article which is, and which he knows or has reason to believe is, an infringing copy of the work.

and

107 Criminal liability for making or dealing with infringing articles, &c.

(1)A person commits an offence who, without the licence of the copyright owner—

(a)makes for sale or hire, or

(b)imports into the United Kingdom otherwise than for his private and domestic use, or

(c)possesses in the course of a business with a view to committing any act infringing the copyright, or

(d)in the course of a business —

(i)sells or lets for hire, or

(ii)offers or exposes for sale or hire, or

(iii)exhibits in public, or

(iv)distributes, or

(e)distributes otherwise than in the course of a business to such an extent as to affect prejudicially the owner of the copyright,

an article which is, and which he knows or has reason to believe is, an infringing copy of a copyright work.

[ ...]

TMA

10 Infringement of registered trade mark.

(1)A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.

(2)A person infringes a registered trade mark if he uses in the course of trade a sign where because—

(a)the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or

(b)the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.

(3)A person infringes a registered trade mark if he uses in the course of trade a sign which—

(a)is identical with or similar to the trade mark, and

(b)is used in relation to goods or services which are not similar to those for which the trade mark is registered,

where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

(4)For the purposes of this section a person uses a sign if, in particular, he—

(a)affixes it to goods or the packaging thereof;

(b)offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;

(c)imports or exports goods under the sign; or

(d)uses the sign on business papers or in advertising.

(5)A person who applies a registered trade mark to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, shall be treated as a party to any use of the material which infringes the registered trade mark if when he applied the mark he knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee. [My emphasis]

(6)Nothing in the preceding provisions of this section shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying goods or services as those of the proprietor or a licensee.

But any such use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing the registered trade mark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.

Note that in all three cases it is a defence that you did not know or have reason to believe there was any infringing material contained in the packaging. However, the TMA provision is less clear cut than that for alleged CDPA infringements.
Disney owns three registered Community Trade Marks (here. here and here) for the words Hannah Montana, only the first of which applies to printed material including packaging. It also covers games and playthings but I am not clear if your scooters would fall into this category. The other two relate to household goods, foodstufs and drinks.

Good luck.

[Bald]

That is all really useful to know...gonna wait and see what they come back with on 6th Dec if anything. Doubt very much they will try and take issue to court even if they did I think I am in a very strong position after all I did not order with image and I offered to cover image or surrender boxes 20 days prior to crappy email from Law Firm.