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Customs Protection of Intellectual Property Rights

Linda Liu & Partners

Preface

Customs protection of intellectual property rights refers to the protection implemented by the customs upon the exclusive rights to use the trademarks, copyrights and copyright-related rights, patent rights (hereinafter collectively referred to as intellectual property rights), which are related to import and export goods and protected by the laws and administrative regulations of the People's Republic of China.
 
Customs, as the administrative authorities for import and export goods, when noticing the suspected infringing goods, can seize the goods timely and notify the right owners for confirmation. Due to the advantages of timeliness and effectiveness of customs protection, in recent years, this means attracts more and more attention from the owners of intellectual property rights. But a lot of enterprises, especially the foreign ones, are not very familiar with the customs protection of intellectual property rights in China.
 
This article will introduce the mode of customs protection of intellectual property rights, the significance and procedures of customs recordation of intellectual property rights, as well as the countermeasures and notes for the right owners and the party whose goods are seized. We hope it will help the readers have a more direct understanding of the customs protection of intellectual property rights in China so as to protect intellectual property rights of their own better and more fully.
 
I Significance and mode of customs protection of intellectual property rights
 
1. Significance of customs protection of intellectual property rights
 
As a big country of trade and manufacturing factory of the world, China has innumerable goods imported and exported through the customs every day. Among them, quite a sum of goods suspected of infringing intellectual property rights are inevitably mixed inside and flowing to the international market from China. As a result, the damage suffered by the intellectual property right owners is enlarged. Thus, it is of great significance for the maintenance of legitimated interests of intellectual property rights owners to strengthen the intellectual property rights protection at the customs and to prevent the infringing goods from importing and exporting through customs’ investigation and punishment.
 
The following two cases illustrate the effects and significance of the China customs protection of intellectual property rights.
 
Case 1: Shanghai customs investigated and seized the automobile halogen lamps which infringe the trademark right of “PHILIPS”[1]
 
On December 15, 2010, the involved party Changzhou Minghao International Trade Co., Ltd. applied with the customs to export a batch of automobile halogen lamps. The customs found out that 107 boxes of 25,948 automobile halogen lamps among the batch used the mark “PHILIP Materials” similar to the trademark “PHILIPS”, which was in suspicion of infringing the recorded trademark right of “PHILIPS” of KONINKLIKE PHILIPS ELECTRONICS N.V.. On December 17, the customs decided to suspend the pass of this batch of goods and notified the right owner of the situation in writing.
 
After receiving the notification from the customs, KONINKLIKE PHILIPS ELECTRONICS N.V. confirmed that the batch of automobile halogen lamps infringed their trademark right and then filed the application of seizing the goods with Shanghai customs on December 22, 2010. Shanghai Customs implemented the seizure on the batch of goods on January 18, 2011.
 
Through investigation, the customs held that Changzhou Minghao International Trade Co., Ltd. used the mark similar to the registered trademark of KONINKLIKE PHILIPS ELECTRONICS N.V. on their automobile halogen lamps to be exported, which has constituted the act of infringing other’s exclusive right to use the trademark right. Pursuant to Article 52(1) of Trademark Law of People’s Republic of China and Article 25(1) of Implementing Regulations of the People’s Republic of China on the Customs Administrative Penalty, Shanghai Customs decided to confiscate the batch of infringing goods and impose a fine of RMB7,000 on Changzhou Minghao International Trade Co., Ltd. on September 19, 2011.


 
The trademark “PHILIPS” which was recorded with General Administration of Customs (hereinafter referred to as GAC) of KONINKLIKE PHILIPS ELECTRONICS N.V.


The automobile halogen lamps with the mark “PHILIPS Materials” exported by Changzhou Minghao International Trade Co., Ltd.
 
Case 2: Qingdao customs investigated and seized the counterfeiting “VIAGRA” & “CIALIS” drugs through mail channel.[2]

When supervising the EMS for export, the on-duty officers of Yantai Customs representative agency in post office which belongs to Qingdao Customs, seized 2 bills of 6 boxes of 18,852 drugs printed with the marks “VIAGRA” & “CIALIS” which were declared with the title of “Plastics Products” and the address of the U.S.A. With the right owner’s confirmation, the seized drugs were all counterfeiting goods of trademark rights.

After seizing the drugs, Yantai Customs reported and transferred the case to Yantai Public Security Bureau. Under the customs’ close cooperation, the public security authority successfully arrested one suspect. On January 17, 2012, Yantai Zhifu People’s Court decided the defendant ZHOU committing the crime of selling the goods counterfeiting registered trademark according to law, who was sentenced to 1 year in prison and 1 year’s probation, and imposed a fine of RMB 60,000 as penalty.

2. Enforcement modes of customs protection of intellectual property rights

Intellectual property right owners achieve the goal of protecting intellectual property right by applying to the customs for seizing suspected infringing goods. And the customs seize suspected infringing goods mainly in the following two kinds of enforcement modes.

Upon application:Intellectual property right owners find the suspected infringing goods which are pending importation or exportation, file an application with the customs at the port of entry or exit for detaining such goods, and provide the customs with a security. If the application conforms to provisions, the customs shall seize the suspected infringing goods. (According to Article 12~15 of Regulations of the People’s Republic of China on Customs Protection of Intellectual Property Rights)

Ex officio:When noticing any import or export goods suspected of infringing a recorded intellectual property right, the customs notify the intellectual property right owner in writing. The intellectual property right owner shall report to the customs whether to apply to seize the suspected infringing goods, within three working days from the date of service of the notification. If the intellectual property right owner applies to seize the suspected infringing goods and provides the customs with security within the stipulated period, the customs shall seize the suspected infringing goods. (According to Article 16 and 20 of Regulations of the People’s Republic of China on Customs Protection of Intellectual Property Rights)

The mode “Upon application” requires the intellectual property right owner to do a lot of investigations in advance so as to obtain the import and export information of the suspected infringing goods, such as the port of entry and the time of import and export, etc.. Thus, in practice, there are few situations that the right owners find the import and export information of the suspected infringing goods by themselves and apply to seize the suspected infringing goods. And accordingly, the proportion of this kind of mode is relatively low in the enforcement of customs protection of intellectual property rights.

On the other hand, after the intellectual property right owners have the same right recorded with the customs, the customs will be obligated to protect the recorded intellectual property rights. And in recent years, China Customs emphasized the protection of intellectual property rights. They actively launched enforcement activities to protect intellectual property rights, by means of strengthening the supervision on import and export goods, increasing the enforcement resources and improving risk management techniques. As a result, the mode of “Ex officio” is more commonly seen in practice.

Statistics of Customs Enforcement Modes in 2011[3]
 
Enforcement Modes Batches Proportion Amount of goods Proportion
Ex officio 18,053 99% 97,585,009 95%
Upon application 149 1% 5,626,258 5%

Unit of amount of goods: piece or pair
                                                  
II Customs recordation of intellectual property rights
 
As mentioned above, the mode “Ex officio” of customs enforcement accounts for more than 99% of the total amounts of all the enforcements. Thus, if the intellectual property right owner wants to gain protection of intellectual property rights through the customs, it is necessary to file the application for recordation for their intellectual property rights with General Administration of Customs of China. The following will briefly introduce the significance and procedures of customs recordation of intellectual property rights.
 
1. Significance of customs recordation and customs protection of intellectual property rights based on the recordation

Customs recordation is applied on a voluntary basis, not by compulsory. But it is of great significance, such as:

(1) Providing feasible and effective protection on the intellectual property rights in the field of import and export

After the intellectual property rights are recorded with GAC, the recordation information will be uploaded on the national network. Each local customs will determine whether any import and export goods have infringed the recorded intellectual property rights based on the recordation information. Through the on-spot ex-officio enforcement by local customs all over the country, the customs recordation can not only effectively protect the intellectual property rights, but also know the intellectual property right infringement situations in the field of import and export.

(2) Effectively preventing recorder’s own goods from being mistakenly determined as infringing other’s intellectual property rights, thus helping them pass the customs

Take trademark as an example. Company A owns the registered trademark “ABCDE” and does not have the same recorded with the customs. Company B owns the registered trademark “ACDB” and has had the same recorded with the customs. Under this situation, when passing through the customs, it is possible that customs officers mistake Company A’s goods for goods that infringe Company B’s above-mentioned recorded registered trademark right. In contrast, if Company A has made the customs recordation, the situation will be totally different. As one basic principle of customs protection of intellectual property rights is “Customs don’t interfere in civil disputes”, which means that if two marks are both registered trademarks, the customs will not determine the ownership. Thus, if Company A has had the registered trademark recorded, the customs would normally hold that Company A uses their own registered trademark instead of infringing other’s registered trademark. Therefore, the customs will not implement temporary seizure of Company A’s import and export goods or determine whether there is infringement.

(3) Low costs and good effects

Other measures against infringement of intellectual property rights often involve preliminary investigation, sending C&D Letter, administrative investigation and punishment, litigation and so on. All of these measures require a lot of time and money of the right owner. It not only takes a long time, but also is difficult to enforce by destroying infringing goods, even if the right owner gets a favorable decision. Conversely, for customs protection of intellectual property rights, as long as the right owners have their intellectual property rights recorded, the customs will supervise the infringement situation of the recorded intellectual property rights based on their function and power and notify the right owner timely. That is to say, in a sense, the customs play the role of “agent” or “investigator” for intellectual property right owners and protect the legitimated rights for them. Also, if the customs determine that relevant goods constitute infringement, they could seize the infringing goods. This is unlike the Administration for Industry and Commerce which has no enforcement power to destroy the infringing goods in administrative investigation and punishment, or the court which would destroy the infringing goods only when a compulsory execution procedure is applied for.

Valid recordation statistics
 
Items Trademarks Patents Copyrights Subtotal
Valid recordation 10,330 4,692 678 15,700
Applications accepted 18,444 7,689 986 27,119
Approved recordation 9,568 4,684 676 14,928
Renewal recordation 208 0 1 209
Changed recordation 554 8 1 563

Up to December 31, 2011

2. Procedure of customs recordation and the documents required
 
Flow chart of customs recordation formalities


 
Required documents and notes
 
Applicant:Should be the intellectual property right owner
Recordation fee: CNY 800

Required documents:
 
Application form for recordation of customs protection(fill in on line and print it out)
Certificate of the applicant’s identity, and Chinese translation thereof
Valid proof of ownership of the relevant intellectual property rights
Remittance voucher of recordation fees
 
If an agent is entrusted, it is required to also submit the following documents:
 
The POA in fixed format designated by GAC
Certificate of the agent’s identity
 
Other documents selected to be filed:
 
Photos of the package of authentic goods or samples thereof
Licensing situation of the intellectual property right
 
III Suggestions for the right owners and the party whose goods are seized after receiving notification from the customs; actions of the customs after seizure

1. Suggestions for the right owners

After intellectual property rights are recorded with GAC, the customs is supposed to notify the intellectual property right owner in writing immediately if any import or export goods suspected of infringing the recorded intellectual property rights are found. The titles of notifications vary among different customs. Generally, they are called the Notification of Suspension of Releasing Suspected Infringing Goods of XX Customs or the Notification of Confirmation on the Infringement Situation of Intellectual Property Rights of Import and Export Goods of XX Customs. The notifications will tell the amount of security required to be filed when applying for seizure.

When the customs notify the intellectual property right owner in writing, they usually send the photos of suspected infringing goods to the right owner by email so that the right owner can distinguish the authentic goods from counterfeits in time. If the photos are not received or are not clear, the right owners should contact the customs immediately. In practice, some customs do not provide photos of suspected infringing goods but ask the right owner to take photograph by themselves. In that case, the right owner needs to submit documents including the Application for Checking Goods and Photographing, and send people to the place where the suspected infringing goods are temporarily detained to confirm and take pictures.

The intellectual property right owner should determine whether the suspected goods are infringing goods or not as soon as possible, by looking at the goods or photos. If the owner is sure of the infringement and decides to apply for the customs’ protection, an application for seizing the goods should be filed within three working days from the date of service of the notification, together with a security. If the right owner fails to file the application for seizure or provide a security after the time limit has passed, the customs shall not seize the goods according to laws. (Article 16 of Regulations of the People’s Republic of China on Customs Protection of Intellectual Property Rights)

The security herein is used for the possible compensation for the losses suffered by the consignee or consignor due to an improper application, and the payment of the expenses of warehousing, maintenance and disposal of the goods incurred after the goods are seized by the customs.

Since there is only 3 working days for response, it is best for intellectual property right owners to set up an efficient response system related to customs recordation. Here are some suggestions.

(1) Entrusting an experienced and efficient agency

It is advisable to entrust a domestic professional intellectual property right agency. They can make professional judgment on infringement. Besides, they have strict internal operation process and response system to the customs, so that they can make the response timely and precisely in 3 working days. Moreover, communication skills are an important factor which cannot be overlooked. Communication skills are needed in negotiating with the customs, and promptly and smoothly communicating with foreign clients. It requires the agents to be able to work in English, Japanese or other languages.

The agency should also have a powerful network in China. If they have branches at different places in China, for example, they could arrange personnel in a timely manner to take photos or verify the authenticity of goods, when the customs fail to provide any photos. It not only can accomplish the task of photographing within the designated time, but also can save transportation and lodging fees for the client.

(2) Setting clear responsibilities and response system internally

If the right owner is a company, it is suggested that clear responsibilities or special post be set up within the company for customs related matters, and specific response ways or procedures be established, no later than the recordation with the customs. This is to realize a timely and effective response when a notification from the customs is received. If an agency is entrusted, the agency should be notified immediately. And the right owner should require the agency to report via email within the same day or 24 hours after receiving the notification.

2. The countermeasures for the party whose goods are seized

The main purpose of customs protection of intellectual property is to effectively protect the recorded intellectual property rights in the field of import and export, and to crack down infringement actions. However, it often happens that some Chinese domestic enterprises or individuals preemptively register other’s prior trademark and have the trademark recorded with customs, when brings trouble to the normal import and export of foreign enterprises. The following is one typical example.

(1) Appeal case of Shanghai Shen Da Co., Ltd. v. Jiu Li De Co., Ltd. for dispute over trademark right infringement[4]

Shanghai Shen Da Co., Ltd. registered the composition trademark “” in China, the term of which is from March 28, 1998 to March 27, 2008 and was extended to March 27, 2018 after renewal. Meanwhile, Shen Da Co., Ltd. had this registered mark recorded with the GAC.

Jolida Inc., a US company, enjoys the exclusive right to use the word mark “JOLIDA” and the device mark “” in the U.S.A. From the first time of use of the trademarks, the time when Jolida Inc. first used the device mark “” and the word mark “JOLIDA ” is earlier than the establishment of Shen Da Co., Ltd. and the registration date of the composition mark “”.

On July 23, 2008, Jolida Inc. and Jiu Li De Electronic (Shanghai) Co., Ltd. signed an OEM contract, in which it agreed that Jiu Li De Co., Ltd. sells to Jolida Inc. JD1501RC, JD202 and JD1301 electronic tube amplifiers, the worth of which is USD 18,800.

Shanghai Waigaoqiao Harbor Customs found that Jiu Li De Co., Ltd. declared 98 pieces of electronic tube amplifiers to be exported to the U.S.A in the way of normal trade. The goods were valued USD 18,800 and had the trademark “Jolida+” on them. They were suspected of infringing the trademark rights of Shen Da Co., Ltd recorded with the GAC. So on August 1, 2008, the Department of Laws and Regulations of Shanghai Customs issued the Notification of Confirmation on the Infringement Situation of Intellectual Property Rights to Shen Da Co., Ltd. With Shen Da Co., Ltd.’s application, Shanghai Customs seized the batch of goods. As in the Notification of Determination of the Situation of Intellectual Property Rights of the Suspected Infringing Goods finally issued by the Customs, it could not be determined whether the suspected goods of Jiu De Li Co., Ltd. infringed the trademark “” of Shen Da Co., Ltd., Shen Da Co., Ltd. filed a lawsuit to the court.

In this case, although Jolida Inc. enjoyed the exclusive right to use the registered word mark “JOLIDA” and the device mark “” in US, it had not registered them in China. Moreover, this case was related to Original Equipment Manufacture (“OEM” for short).

For this type of disputes, there is no clearly applicable legal provision. In the judicial practice, different courts have no consistent judgments. The mainstream one is that if the products manufactured through OEM are not sold in China, the manufacture will not be deemed as infringement. The reason is that the products manufactured and exported through OEM are all sold to overseas market, and the trademarks indicated on the products or labeled on the packages are legitimate marks in the consignors’ country. Therefore, in the overseas market, relevant consumers can recognize through the trademarks that the source of the goods is the consignor company. Since all the involved products are exported and not actually sold in China, there is no possibility that Chinese domestic consumers will be confused and mistake the source of the goods.

Furthermore, as for the issue whether OEM manufacture belongs to “the use of trademark”, the Supreme People’s Court presented a clear legal opinion in the Administrative Judgment of Arraignment of the Suit between Ryohin Keikaku Co.,Ltd. and TRAM[5]. The Supreme Court holds in the Judgment that, the trademarks only realize their functions in the circulation of goods. So in this case, although Ryohin Keikaku Co.,Ltd. entrusted the Chinese domestic enterprise to OEM manufacture relevant products for export, the products labeling with the marks were not sold in the market of China, and the publicity and reporting is outside China. It does not constitute the “act of using the trademark”. According to this legal opinion, we can deduce that labeling a foreign trademark on the products of OEM does not constitute the “act of using the trademark”. Therefore, it doesn’t constitute the infringement on other’s trademark right.

In the appeal case of Shanghai Shen Da Co., Ltd. v. Jiu Li De Co., Ltd. for dispute over trademark right infringement, the court finally determined that the act of Jiu Li De Co., Ltd. does not constitute trademark infringement.

(2) Specific countermeasures when the goods are seized by the customs

After seizing suspected infringement goods, the customs will send the Notification of Seizure of Suspected Infringing Goods to the party whose goods are seized and request such party to present a written explanation to the customs together with relevant evidence if the party alleges that the seized goods do not infringe the right of the intellectual property right owner. Pursuant to Article 19 of the Regulations of the People’s Republic of China on Customs Protection of Intellectual Property Rights, the party whose goods are seized can request the customs to release the goods after a security equivalent to the value of such goods is provided.

It is advised that, if the party whose goods are seized believes that his goods do not infringe other’s intellectual property rights, he should contact and inform the customs shortly after receiving the Notification, and confirm with the customs about the time limit of filing relevant written explanation and evidence.

After the confirmation, the party should immediately prepare and collect the evidence which would prove the non-infringement, draft the written explanation based on the evidence, and file them with the customs before the deadline.

As for the evidence collection for the OEM manufacture, the evidence shall include the OEM contracts, the certificate of prior copyright of the consignor or the certificate of intellectual property rights in designated country which is prior to the recorded registered trademark of the intellectual property right owner, as well as the evidence of use (such as the Certificate of Copyright Registration, the Certificate of Trademark Registration in designated country, and relevant proof of use), the evidence that all the products of manufacture are sold to the designated country, i.e. the goods are not sold in China (in other words, the amount of goods agreed in the contract is the same as the amount of export goods). When necessary, it is suggested to claim that the recorded trademark of the intellectual property right owner belongs to malicious registration.

At last, the customs will make the determination on whether the suspected infringing goods have infringed the intellectual property right, based on the evidence filed by the party whose goods are seized. Generally, for more complicated cases, the customs will make a decision of no determination and inform the applicant to apply to the court within certain period for taking the measure of injunctions for infringement or property preservation and send related notification of the court to the customs for assistant execution. If no notification of the court is received within a time limit, the customs shall release the seized goods.

In order to avoid the situation that the trademark enjoying a prior right is maliciously preemptively registered by another in China and recorded with the customs, it is advisable that enterprises shall register trademarks in China as soon as possible and record the successfully registered trademarks with the customs in time.

3. Actions of the customs after the application for seizure is filed

If intellectual property right owners request customs to seize the suspected infringing goods, the customs shall carry out an investigation and make, within 30 working days from the date of seizure, a determination as to whether the suspected infringing goods under detention have infringed the intellectual property right.
 
If the suspected infringement goods are determined to have infringed the intellectual property right
 
The customs shall confiscate the infringing goods:

After confiscating the infringing goods, the customs shall notify the intellectual property right owner of the information related to the infringing goods in writing. There are four kinds of treatments for the confiscated infringing goods (according to Article 27 of Regulations of the People’s Republic of China on Customs Protection of Intellectual Property Rights):
 
1. If the confiscated goods can be used for public welfare undertakings, the customs shall hand such goods over to the relevant public welfare bodies for use in public welfare undertakings;
 
2. If the intellectual property right owner intends to purchase the goods, the customs may have such goods assigned to the intellectual property right owner with compensation;
 
3. If the confiscated goods cannot be used for public welfare undertakings or the intellectual property right owner has no intention to purchase the goods, the customs may have such goods auctioned according to law after removing their infringing features. But for import goods bearing counterfeit trademarks, except for special situations, only removing the label of trademark from the goods is not enough to permit the goods to enter into the channel of commerce;
 
4. If the infringing features cannot be removed, the customs shall destroy the goods.
 
The customs may also impose a fine:

According to Article 25 of Implementing Regulations of the People’s Republic of China on Customs Administrative Penalty, a fine of not more than 30% of the value of the goods may be imposed.
If the infringing goods have constituted crimes, the customs shall hand over the case to the Public Security Authority
 
If the infringement cannot be determined
 
As mentioned above, if the customs decide not to determine whether it constitutes infringement, the intellectual property right owner can file a lawsuit with the People’s Court and apply for pre-action preservation of the goods seized by the customs. After receiving the ruling of pre-action preservation and the notification of assistance in execution of the ruling from the People’s Court, the customs shall provide assistance in seizing the suspected infringing goods. Finally, if the People’s Court decides that the suspected infringing goods do not infringe the intellectual property right of the right owner, the intellectual property right owner shall take the liability of compensating for damage caused to the consignor or consignee due to the seizure.

4. The payment of the expenses for warehousing, maintenance and disposal of the goods and the return of security

After disposal of the infringing goods, the customs will send the intellectual property right owner the result of the disposal of the case, and notify the intellectual property right owner to make the payment of relevant expenses for warehousing, maintenance and disposal of the goods. The customs return the security after receiving the voucher of the above-mentioned payment made by the right owner. If the intellectual property right owner fails to make relevant payment, the customs may deduct it from the security provided to the customs. In practice, it takes about 1~2 years for the whole customs protection procedure from applying for seizure to the returning of security.

IV The issues which the right owners should pay attention to
 
1. Updating the information of customs recordation in time
 
Renewal of customs recordation

The term of customs recordation is 10 years. If the right owner intends to continue customs protection of the intellectual property right, and if the intellectual property right is still valid, the right owner shall apply for the renewal of customs recordation with the GAC within 6 months prior to the expiration date of the customs recordation of intellectual property right. The term of each renewal is 10 years. If the right owner fails to apply for the renewal upon the expiration of customs recordation or the intellectual property right is not protected by the laws or administrative stipulations any more, the customs recordation of intellectual property right become invalid accordingly.

The change and cancellation procedures of the customs recordation

If there are changes in the owner of the intellectual property right or other information, the right owner shall proceed with the change or cancellation procedures of customs recordation with the GAC within 30 working days from the date of change. If the right owner fails to proceed with the change or cancellation procedures, which leads to serious impact on other’s legitimate import or export or the implementation of supervision duty of the customs according to law, the GAC can revoke the relevant recordation upon the application of relevant person with interests, or revoke the recordation on its own initiative.
 
2.The management and updates of White List
 
After the customs recordation of the intellectual property right is approved, the right owner shall, through the System of Recordation of Intellectual Property Rights, add to or delete legal users from the List of legal users of the recorded intellectual property right, which is called the White List. If the legal users of the recorded intellectual property right have not been added timely, their goods may be regarded as infringing recorded intellectual property right and seized by the customs officers. Although the goods will pass after the right owner requests the customs to release them, unnecessary losses like the delay of delivery may happen.

3. The determination of suspected infringing goods

In most cases, the right owners can determine whether the suspected infringing goods are counterfeits or infringing goods. However, the ways of infringements have many variations. Some infringement ways make it hard for the right owner to determine whether the goods are infringing or not. That is to say, the right owner may recognize that the goods are not authentic, but he may not be able to determine whether the use of trademark on the suspected infringing goods constitutes trademark infringement. For example, the right owner’s recorded trademark is “ABC”, the status of the use of the trademark on the suspected infringing goods is “USE FOR ABC”. Our opinion is that, if in “USE FOR ABC”, the “USE FOR” and “ABC” are in the same line, and their fonts, colors and sizes are the same, then the recorded trademark “ABC” does not stand out, which would not cause confusion with the recorded trademark “ABC” among relevant consumers. Therefore, there is no infringement. An opposite situation would constitute infringement.

Thus, to avoid the liabilities of compensating for damage due to the improper application, the right owner should consult the attorney in time if he has any doubts when confirming the suspected infringing goods.
 
4.Combination of two ways of protection
 
The infringing goods seized by the customs involve trademark right, copyright and the rights relevant to copyright, patent right, the Olympic Symbol, the World Exposition Symbol and various other intellectual property rights. Among all the seizure cases, the trademark right infringing cases take the majority, because trademark infringement can be intuitively and more easily perceived. In contrast, patent right (mainly refers to invention patent and utility model) is relatively complicated in technology, and is difficult to determine. Therefore, it is hard for the customs to find goods infringing patent right during their routine supervision. Thus, as for the customs protection for invention and utility model, besides recordation with the GAC, it is advisable for the patent owner to investigate on import and export information based on already obtained infringement traces, and to request the customs to seize the suspected infringing goods when necessary, so as to protect the patent effectively.

Statistics of Types of Intellectual Property Rights

Involved in Infringing Goods of 2011
 
Types of Intellectual Property Rights Amount of Goods Proportion
Total 103,211,267  
Trademark Right 97,381,751 94%
Copyright 255,738 0.1%
Patent right 5,569,274 5%
the Olympic Symbol/ World Exposition Symbol 4,504 0.1%

Unit of amount of goods: piece or pair

Statistics of the Way of Transport of Infringing Goods of 2011
 
  Post Express Sea transport Air transport Road transport Railway Transport Other
Batches 8,981 4,997 2,171 646 486 190 719
Proportion 49% 28% 12% 4% 2% 1% 4%
Amount of Goods 417,587 1,333,292 96,448,866 310,118 3,565,595 66,578 1,069,231
Proportion 0.4% 1% 94% 0.3% 4% 0.1% 1%

Unit of amount of goods: piece or pair
 
Conclusion

Customs protection of intellectual property, as its protection scope covers local customs all over the country, the application procedure is relatively simple and convenient and the effect is obvious, has gained attention and is used more and more by intellectual property right owners both at home and abroad in recent years. And if the intellectual property right owner intends to make good use of this means, a recordation with the GAC for the relevant intellectual property right in advance is needed.

Our firm has acted as the agency for a large number of cases of customs recordation and responding to the customs. We have accumulated rich experience and established an efficient response system. Regarding the customs protection of intellectual property, if there are any questions or anything that we could be of assistance, please feel free to contact us.
 

[1] This case is from the China Customs Protection of Intellectual Property and Customs Recordation List (2012).
[2] The case is from the 2012 Top 10 Cases of China Customs Protection of Intellectual Property Rights issued by General Administration of Customs of People’s Republic of China.
[3] The customs statistics of 2011 are from the China Customs Protection of Intellectual Property and Customs Recordation List (2012).
[4] The case is from (2009) Hu Supreme Civil No.3 (IP) Final No. 65
[5] The case is from (2012) Administrative Arraignment No.2
(2013)

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