In his peer reviewed article “A border protection of Trademark in Rwanda: Challenges and the way forward.” published in the Rwanda Law Journal, issue No 2 of November 2021, Cyridion Nsengumuremyi assesses how Rwanda complies with its international obligations under the Agreement on Trade related Aspects of Intellectual Property (TRIPS Agreement). Rwanda is party to this Agreement since 1996.
TRIPS Agreement provides, among others, for border measures against an importation of goods infringing a duly registered TM in the country of importation. There are challenges relating to the implementation of this Agreement at the national level and challenges relating to the enforcement of some rights provided by TRIPS agreement and domesticated via the Rwandan IP law.
TRIPS Agreement provides for a destruction of infringing goods as an adequate deterrence against TM infringement. However, it allows at the same time a release into free circulation of suspected infringing goods before a hearing of the case in substance on TM infringement. Here the challenge is how to balance between rights of the TM holder and those of the importer. Another challenge is that when the competent authority decides a suspension at the border of suspected infringing goods, the Rwandan law doesn’t provide for how many times an extension of the suspension can be requested and impliedly how long goods can be retained in customs waiting for a decision of the case in substance on TM infringement. A last discussed challenge refers to a silence of the Rwandan law on TRIPS directions according to which the court deciding the case in substance that finds goods to be infringing can decide a non-destruction of those goods taking into account the seriousness of the case and for the purpose of the respect of the rights of third parties.
The author departed from cases decided by Rwandan courts in this field and used a desk research and a comparative approach to analyse the above-mentioned challenges and to propose solutions aligned with the international Intellectual Property system.
Concerning the challenge of balancing between rights of the TM holder and of those of the importer in terms of release or non-release of goods before a hearing of the case in substance, the author recommends facilitating an inspection of goods by the right holder after their suspension at the customs. This inspection could lead the right holder to take an informed decision to request for extension of the suspension of release of goods into free circulation or not. Concerning a number of times parties should go to court in the context of pleading on extension of suspension of release of goods, Rwanda should learn from best practices from other jurisdictions where suspected TM infringing goods are suspended from their release into free circulation until the case is decided in substance on TM infringement. In this context and for avoidance of undue delays as recommended by TRIPS Agreement, an amendment of the IP law should be accompanied by administrative measures at the level of the competent court to provide closer dates for the hearing of related cases in substance on TM infringement. As to the release of goods found to be infringing taking into account interests of third parties, the Rwandan IP law should be amended to enable a different treatment between infringing goods that are sub standards and that should definitely be destroyed or recycled if possible, and non-substandard infringing goods. The law should empower courts to decide a total disconnection of non-substandard infringing goods from the infringer by channeling them to the population in need. These proposed solutions could, in addition, be guaranteed through capacity building for IP enforcing organs including judges and the customs staff members in particular as well as members of the Bar association that involve in these cases on behalf of a right holder and of an importer.
