Protection Recordation for IPR in China Customs

In respect of the necessity of customs protective recordation of IPR, a relevant official from General Administration of Customs (GAC) explained that it is positive protection, not of insignificance.

The official said that customs protection of IPR consists of positive protection and passive protection, while customs protective recordation of IPR is a precondition of positive protection, which means if the IPR is recorded in GAC, customs will find out the suspected infringing goods during imports and exports and inform IPR holders in time.

According to statistics from GAC, over 90% infringing goods are seized by inspectors in daily supervision on imported and exported goods.

Recordation is an important weapon against the fake and can help customs execute active protection, find out infringing goods and contact with IPR holders in time.

In addition, recordation can reduce infringing acts. The publicity of information of IPR recordation can warn and frighten the enterprises engaged in unscrupulous import and export of infringing goods.

Laws do not require the holder of intellectual property right to apply for recordation of his intellectual property rights before he applies to the General Administration of Customs for protection; an intellectual property right holder may request the customs to detain the goods suspected of infringement without recordation of his intellectual property rights. But in practice it will have different influences whether there is recordation or not. The main purposes of recordation are as follows:

It is the precondition of the customs’ active protection. According to Regulation of the People’s Republic of China on the Customs Protection of Intellectual Property Rights, where the customs find that any suspected infringing goods are to be imported or exported, they do not have the rights to stop the entry or exit of such goods if the intellectual property right holder does not apply for recordation. It is especially important for the trademark and copyright’s protection;

It is helpful for the customs to find the infringing goods. Although, after the recordation, where the holder of intellectual property right finds that suspected infringing goods are to be imported or exported, he still needs to file an application to the customs for protection in accordance with Regulation of the People’s Republic of China on the Customs Protection of Intellectual Property Rights. But in practice whether the customs can find the infringing goods or not depends on the customs’ checking on such goods. It is possible for the customs to actively detain the goods suspected of infringement during the daily control process, because where the holder of intellectual property right applies for archival filing, he needs to provide documents of the legal status of the intellectual property right, the right holder’s contact details, legal use of intellectual property rights and related pictures and photos. So the legal rights and interests of the right holders can be protected in time because of the recordation.

It lightens the economic burden of the holder of intellectual property right. In accordance with Regulation of the People’s Republic of China on the Customs Protection of Intellectual Property Rights and the intellectual property right holder shall provide a security of not more than 100 thousand yuan to the customs under the framework of protection of China Customs. If the holder of intellectual property right does not apply for recordation, he shall not be treated as above, and provide the customs with a security equivalent to the value of the detained goods;

It acts as a warning to the infringer. Because the customs shall confiscate the infringing goods and impose the administrative sanctions on the import and export firms, the recordation may warn and frighten the firms which unscrupulously import and export the infringing goods, and impel them to consciously respect the related intellectual property rights. Moreover, those non-vicious firms which import infringing goods may know whether or not the processed and exported goods infringe the legal rights by recordation.

The applicant for IPR protection recordation in General Administration of Customs should be in conformity to the following provisions when filling in the recordation application:

1. Application for trademark right protection

The applicant should be consistent with the trademark registrant written on the Registered Trademark Certificate. If the name of the trademark registrant has been altered, the applicant should be consistent with that on the Trademark Registration Proof. If the Chinese name of the applicant is not consistent with that on the Registered Trademark Certificate, while his foreign name is consistent with that on the Registered Trademark Certificate, it can be regarded as in conformity with the provision.

2. Application for patent right protection

The applicant should be consistent with the patent holder written on the Patent Certificate. If the period between the date of issuing Patent Certificate and the date of protection application exceeds one year, or the name of the patent holder has been altered, the applicant should be consistent with that on the Patent Registration Counterpart.

3. Application for copyright protection

The applicant should be consistent with the copyright holder on the Volunteer Registration Certificate. If there is no volunteer registration, the applicant should be consistent with that on other related copyright proofs. If the copyright is registered abroad, the foreign name of the applicant should be consistent with that on the Registration Certificate issued by the foreign copyright registration administration.

4. If the right holder consigns the application to an agent, the agent may apply in his own name.

The holder of intellectual property right shall attach the following documents and evidence when he presents the application for recordation to the General Administration of Customs:

(1)A photocopy of personal identification document, or business license or other documents which identifies the holder of intellectual property right;

(2)A photocopy of the Trademark Registration Certificate issued by the Trademark Office of the State Council’s industry and commerce authority, the documents confirming trademark registration issued by the Trademark Office of the State Council’s industry and commerce authority shall be presented in addition where the applicant has been permitted to change, renew, transfer the trademark registration or apply for recordation of an International Registered Trademark;

A photocopy of the certificate of voluntary copyright registration issued by the copyright registration authority, or the photographs of the works confirmed by the copyright registration authority. Where the applicant has not carried out the procedures for voluntary copyright registration of his works, a sample of his works or other evidence which can prove his ownership of the copyright shall be presented;

A photocopy of the patent certificate issued by the State Council’s patent authority. Where the grant of patent has been announced more than one year, a duplicate of the patent register issued, within six months prior to the application for recordation, by the State Council’s patent authority. Where applying for the recordation of an utility model or a design, a photocopy of search report of the utility model or a photocopy of announcement of design issued by the State Council’s patent authority shall also be presented;

(3)A photocopy of a contract of license shall be presented where the holder of intellectual property right has licensed other parties to use a registered trademark, a work or a patent and a contract of license has been reached. Where no written license has been reached, a document explaining the details of scope, term of the license, etc. shall be presented;

(4)The photographs of goods and their package on which the holder of intellectual property right lawfully exercised his rights;

(5)The evidence of the known import or export of infringing goods; Where any infringement dispute between the holder of intellectual property right and other party has been settled by a People’s Court or by the competent intellectual property right authority, a photocopy of the relevant legal document shall also be presented; and

(6)Any other documents or evidence that the General Administration of Customs considers necessary to present.

The documents and evidence presented by the holder of intellectual property right to the General Administration of Customs in accordance with the preceding paragraph shall be complete, truthful and valid. Where the relevant documents and evidence are in a foreign language, they shall be accompanied by a Chinese translation. Where the General Administration of Customs deems necessary, it may require the holder of an intellectual property to present notarization or certification of the relevant documents or evidence.

Application:

In accordance with the provisions of Regulation of Customs Protection of Intellectual Property Rights of, the owner of intellectual property rights, who applies to the customs for protecting his/her intellectual property rights, shall enter his/her intellectual property rights in the record of General Administration of Customs. The owner of intellectual property rights, when applying for the record of customs protection of intellectual property rights, shall fill out Application Form for the Record of Customs Protection of Intellectual Property Rights and submit the written application to General Administration of Customs.

The application form shall include the following contents

(I) The title or name, origin of registration or nationality, address, legal representative and major business place of the owner of intellectual property rights;

(II) Registration number, content of the registered trademark as well as authorization number, content and period of validity of the effective patent, or relevant content of the copyright.

(III) Name and origin of production of goods related to the intellectual property rights;

(IV)The person that is authorized or licensed to use the intellectual property rights;

(V) Relevant information on the main entrance and departure customs, export and import dealer, primary characteristics, normal price of the goods related to the intellectual property rights;

(VI)Relevant information on the manufacturer, export and import dealer, main entrance and departure customs, primary characteristics, normal price of the goods known for violating the intellectual property rights;

(VII)Other information that should be provided as required by General Administration of Customs.

Refer to How to Fill out Application Form for the Record of Customs Protection of Intellectual Property Rights for filling out the application form.

The following documents shall be attached when the written application form is submitted

(I) The copy of Certificate of Identification of the owner of intellectual property rights or the duplicate or the registration department certified copy of Certificate of Registration;

(II) Duplicate of the Certificate of Registration of the registered trademark, announcement of registered trademark transfer approved by Trademark Bureau or the copy of trademark licensing contract on the record; or the copy of Certificate of Patent, duplicate of patent transfer contract registered and announced by Patent Bureau, duplicate of contract for licensing patent implementation; or evidentiary document or evidence of copyright;

(III)Other documents that need to be attached as required by General Administration of Customs.

Within 30 days after receiving all the application documents, General Administration of Customs will notice the applicant as to whether the record will be entered. For the application that is approved to be entered in the record, General Administration of Customs will issue Certificate of Customs Protection of Intellectual Property Rights for the Record; for the application that is not approved to be entered in the record, General Administration of Customs will explain the reason(s). When the application has been approved to be entered in the record, the copyright owner can request entrance and departure customs to take actions to protect his/her intellectual property rights if he/she finds out any goods suspected to violate his/her intellectual property rights is about to enter or exit this country.

Department of General Administration of Customs responsible for customs protection of intellectual property rights: Intellectual Property Office of Policy & Legislation Department

Address: No. 6 Neida Street, Jianguo Gate, Beijing

Postal Code: 100730

FEES:

1. When applying for IPR Customs Protection archival filing to the General Administration of Customs, the IPR right holder should pay an archival filing fee of 800 yuan for each archival filing application.

2. The applicant should transfer the filing fee to the dedicated account for the archival filing fee of the General Administration of Customs through bank. The General Administration of Customs does not accept payment of the archival filing fee by post office remittances, or cash, checks and other forms.
Dedicated account for archival filing fees of IPR Customs Protection by the General Administration of Customs:

Opening Bank: Beijing Wangfujing Branch, Industrial and Commercial Bank of China
Bank number: No. 7, Industrial and Commercial Bank
Account number: 090144070-44
Account name: General Administration of Customs, Dedicated Account for IPR fees

3. The applicant should pay the archival filing fee before application, and attach the copy of bank transfer bill to the application. If no transfer bill copy is attached, the General Administration of Customs would not accept the application.

4. The General Administration of Customs, after the grant of archival filing for IPR customs protection, should issue the receipt of the filing fee to the applicant. If the application is refused, the filing fee should be refunded to the applicant.

5. In the period of validity, if the applicant extend or modify the archival filing, no fee should be charged. If the applicant re-applies IPR archival filing after the invalidation, he should pay the filing fee again.

If the archival filing for IPR customs protection is legally canceled, revoked or otherwise invalid by the General Administration of Customs, the archival filing fees would not be refunded to the applicant.

Source: IPR in China

• Protection Measures for IPRs during Exhibitions in China (0)
• Undisclosed Commercial Information – Trade Secrets (0)
• Regulation of the Peoples Republic of China on the Customs Protection of Intellectual Property Rights (0)
• Protection Against Intellectual Property Rights Infringement (0)
• New Customs Enforcement Process Regarding IPR (0)
• New China Customs Enforcement Regulations of IPR (0)
• Trademark Law of the Peoples Republic of China (the 2nd amended edition) (0)
• Trade Mark Matters in China (0)
• To What a Sum can a Trademark Infringement Constitute a Crime in China? (0)
• The Supreme Court of the People’s Republic of China has Issued Judicial Interpretation to Strengthen Patent Protection (0)