Have a China Brand Protection Strategy
The essential first step in most China IP strategies is to register your trademarks with China’s Trademark Office. Because China is a first-to-file country, until you register a trademark in China you have no rights in that trademark. But a trademark registration alone will not limit the spread of counterfeit goods. A trademark registration merely gives you the legal capacity to enforce your rights to that mark and it should properly be seen as just one of the pieces in your overall IP strategy. The same holds true for your products protected by a Chinese registered copyright or patent.
Register your China Trademark with China Customs
For any company concerned about counterfeit goods coming from China, the next step should be registering your trademark with China Customs. This is not a legal requirement but a practical one: though Customs officials have discretion to check every outgoing shipment for trademark or copyright or patent 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.
China Customs Trademark Registration Essentials
To register your trademark, copyright, and/or patent with China Customs, submit the following documents with your application:
- Business License: A copy of your business license or certificate of incorporation. Ensure that these documents are in Chinese or have been translated into Chinese.
- Registration Certificate: A copy of the Chinese registration certificate for your trademark, patent, or copyright.
- Power of Attorney: A valid Power of Attorney.
Product Pictures: Images of the goods and their packaging for which you are seeking protection.”
Seizure and Destruction: Post-Registration Actions
If you register your IP with China 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 typically 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. As a practical note, do not expect any transparency regarding the destruction process or invitations to witness it — you are just going to have to take China Customs’ word on it.
Timeframes for Registration and Action
Registration with China Customs generally takes three to five months and can be done only after China’s Trademark Office has issued a trademark certificate. The latter currently takes approximately eight to ten months, which means that within eleven to fifteen months of the date you file your trademark application, China Customs could be helping you by stopping counterfeits of your products from being exported from China. The same generally holds true for copyrights and patents.
Real-World Implications
And just to be clear, registering with China Customs can work. Our law firm had a tech-device manufacturer for whom we registered their IP with China Customs. A few months after we completed the registration, our client was alerted by China Customs to a shipment of potentially infringing goods. We requested China Customs seize the potentially infringing goods. The result? A considerable batch of counterfeit products was prevented from entering the market, safeguarding our client’s brand integrity and market position. This real-world example underscores the pivotal role registration with China Customs can play in an IP protection and anti-counterfeiting strategy.
Enhancing Cooperation with China Customs
In addition to the registrations discussed above, it almost always will make sense for someone to meet with China Customs on your behalf to introduce your product and advise officers on how to distinguish between genuine and counterfeit products. This will also show Customs you are willing to work with them to go after counterfeits. Seek out meetings at key ports and accept all invitations to Customs workshops, even if at first glance the port in question does not seem particularly critical.
A Call to Action
So, take action right away. Register your China trademark now, then register it again with China Customs. If you do this, you will almost certainly see a reduction in counterfeiting of your products, regardless of your industry and manufacturing locations.
Conclusion
Remember:
Prompt Action is Crucial. Initiating your trademark registration and aligning it with China Customs registration as swiftly as possible is pivotal.
Engage with China Customs Officials. Proactive and cooperative interactions with customs can enhance your anti-counterfeiting strategy.
