Customs border enforcement of IP rights

Zhaokang Jiang

Sandler, Travis & Rosenberg, PA

[email protected]

Customs border enforcement has become one of the most effective measures to protect intellectual property, especially trademarks. It has been strengthened by the World Trade Organisation's Agreement on Trade-related Aspects of Intellectual Property Rights (Trips), the World Customs Organisation's action plan, national legislation and the unique position of government customs administrations for the control of import and export of commodities and articles carried by travellers. In China, Customs seized 3310 shipments and confiscated 320 million infringing articles in 2007.

The following is a timeline of recent applicable legislative activity:

September 1994: China started border enforcement of IPR with the authorisation of an ordinance from the State Council.

October 1995: China promulgated and implemented its first ever Regulations on the Customs Protection of Intellectual Property Rights, and began to establish its system of IPR customs border enforcement protection in accordance with WTO rules.

Year 2000: NPC Standing Committee amended the PRC Customs Law, defining the functions of IPR customs protection from a legal perspective.

December 2003: China revised its PRC Regulations on Customs Protection of Intellectual Property Rights, strengthening the authority of customs in investigating and dealing with rights-infringing goods and reducing the burden on IP owners in seeking customs protection. The General Administration of Customs later issued its Measures for Implementation of the revised regulations.

September 2004: the Chinese government promulgated the Regulations on Implementation of Administrative Penalties of the Customs Law, which clearly provided administrative penalties for infringements on IPR in importation and exportation.

1. Customs recordation of IP rights. Pursuit to the IPR customs enforcement rules, intellectual property rights (IPR) owners (including copyright owners and their licensees, trademark owners and patentees) or their agents may request Customs to protect their IPR related to imports and exports. Although customs will accept the detention request from the rights holder before the IPR owner files customs recordation, the IPR owners should still record their rights with the General Administration of Customs with the following information: (1) Name, place of registration or nationality, address, legal representative, and principal place of business of the IPR owner; (2) For registered trademark, the registration number, details and validity period; for patents, patent number, details and validity period; for copyrights, the copyright details; (3) Name of the product relating to the IPR and its place of origin; (4) Licensee(s) or person(s) authorised to use the IPR; (5) Customs of entry/exit, importer/exporter, major characteristics and price of the product relating to the IPR; (6) Manufacturer, importer/exporter, customs of entry/exit, major characteristics and price of the right-infringing product; and (7) Other information as required by the General Administration of Customs.

2. Detention of suspected infringing goods. Protection Measure pursuant to Application: Where discovering the suspected infringing goods pending importation or exportation, the holder of the IP right may present an application with customs at the port of entry or exit for detaining such goods, and customs will detain the relevant goods upon application. Whenever the rights holder or its agent requests a detention, the request should contain the following information and intelligence (the more the better): (1) the name of the IPR and the place and nation of registration; (2) the name and content of the IPR and relevant information; (3) the names of the shipper and consignee of the suspected shipment; (4) the description and specification of the suspected goods; and (5) the port, date of entry or exit and vessel and flight numbers or even container numbers, if any.

Ex officio enforcement: Where customs discovers, when performing supervision and control over import or export goods, any import or export goods suspected of infringing a recorded IP right recorded with the General Administration of Customs, they are empowered to suspend customs clearance, notify the right owner for further actions such as detention of the suspected infringing goods, and initiate an investigation.

3. Surety for customs detention. While customs requires that the petitioner for the detention provides customs with a surety to cover the warehousing and other costs and damages due to the detention, an annual multiple detention surety is acceptable and can be used to facilitate the detention process.

To protect the intellectual property rights effectively at the border, the rights owners shall diligently work together with their lawyers to:

(1) register their IP rights in China;

(2) record their IP rights with China customs;

(3) establish good working relationship with customs;

(4) provide product training to customs officials;

(5) collect more and accurate intelligence and request targeted detention;

(6) mobilise your internal team and respond quickly to the customs action;

(7) work with customs attachés at embassies in China;

As long as IPR owners work diligently with specialised lawyers to fight infringement at the border effectively, it is possible to restrain infringements in international trade.