If you want to stop counterfeit goods bearing your trademark from leaving China, register your China trademark again with Chinese Customs.
I. New policy of Chinese Customs
China Customs recently issued a notice stating that they are temporarily suspending registration fees in an effort to alert more companies to their registration service. In other words registering your trademark or other IP with China customs is now free.
Furthermore, in order to better safeguard the “Made in China” international image and promote the sustained and healthy development of China's foreign trade, the State decided to launch a three-year image abroad Maintenance “breeze action” from June 2015, and it received a positive response since then.
For instance, according to recently released statistics, Yiwu (Zhejiang Province) has smitten 192 infringement and counterfeiting cases, involving the amount of 2.3218 million yuan. Of which 155 cases involving foreign trademarks, accounting 79.77% of the total counterfeit infringement cases. Nearly all of the seizures were of goods that infringed registered Chinese trademarks, and that those trademarks had been registered not only with China’s Trademark Office but also with Chinese Customs.
II. How to register your trademark in Chinese Customs
To protect your trademark right in China, the essential first step is to register your trademarks with China’s Trademark Office. Because China is a first-to-file country, until you register a trademark you have no rights in that trademark. But a trademark registration alone will not limit the spread of counterfeit goods.
For any company concerned about counterfeit goods coming from China, the next step should be registering your trademark with Chinese Customs. This is not a legal requirement but a practical one: though China Customs officials have discretion to check every outgoing shipment for trademark infringement against the Trademark Office database, in reality they only check against the Customs database. No separate registration with Customs means no enforcement by Customs.
2.1. Registering your trademark with China customs is relatively easy, however, non-Chinese trademark owners must act through a PRC agent. China customs usually requires the following information for customs registration:
- Full name and registered address of the IP owner
- Contact information, including name, department, address, cell phone number, landline number, fax number, and email address.
- a “business license”
The “business license” is usually a Certificate of Incorporation or a Certificate of Good Standing, proving to China customs that you exist and are a legitimate business. When lawyers do customs filings, they also provide China customs with Chinese translations of these documents. China Customs sometimes does not accept black and white pdf versions of these documents but usually our explanation of how they are indeed the original version suffices. When that does not work, we secure a certified copy of the document bearing the seal of the state or country. What we choose to provide initially will typically depend on our client’s timing and cost issues.
Our attorneys also provide China customs with our own identity document, along with gobs of contact information listing our lawyers as a designated point of contact. We also must provide China customs with a power of attorney signed by the IP owner (Customs requires we use a particular form), authorizing us to handle filings on its behalf. The POA requires the name of the person executing the POA, his/her title, phone number, email address, and the date the POA is executed.
2.2. We next submit the relevant IP information, typically consisting of the following:
- The IP owner’s name.
- The type of registration (domestic or WIPO). Domestic registrations are generally easier and better. For more on this, check out China Trademarks. Register Them In China Not Madrid.
- The trademark registration number, class, list of goods, and the time period during which the IP registration is effective.
- A certificate of trademark registration and a photo of the client’s mark. For word marks, a typed copy of the words is not sufficient; China customs requires a photograph of the word mark.
- For each trademark, a list of products covered by the trademark and a list of those for which the client would like “heightened protection” from Customs. China customs allows us to provide up to 30 items per trademark.
- For each product, the name of the product, a brief description of the product (in Chinese, of course), and a photo clearly showing the product.
- Going forward, we are able to modify product information to correspond to the IP owner’s updated product line.
We also provide a list of the names of any entity authorized to use each of the trademarks other than the actual trademark owner. For each such entity, we provide the name of the entity, the name of the product(s) the entity is authorized to use, the type of entity (e.g., manufacturer, exporter, importer), and a time period (a start date and an end date) for when the entity is authorized to use the trademark.
Registration with China Customs generally takes three to five months and can only be done after China’s Trademark Office has issued a trademark certificate. The latter currently takes approximately fourteen months, which means that within nineteen months of the date you file your trademark application, Chinese Customs could be helping to stop counterfeit goods from being exported from China.
III. The advantage of trademark registration in Chinese Customs
If you register your mark with Customs, they will contact you any time they discover a shipment of possibly infringing goods. At that point you have three working days to request seizure of the goods. Assuming you request seizure (and post a bond), Customs will inspect the goods. If Customs subsequently concludes the goods are infringing, they will invariably either donate the goods to charity (if the infringing mark can be removed) or destroy them entirely. The cost of destruction, and of storing the goods during the inspection process, will be deducted from your bond.
Once customs approves your registration, it is valid for ten years, but may be renewed for additional ten-year periods.
China customs also allows for registering copyrights and patents, and it’s often advisable to do so as part of a comprehensive China IP strategy.