1.What is Customs Protection of Intellectual Property Rights in China?

 

According to <Regulations Regarding Customs Protection of Intellectual Property Rights of the People's Republic of China>, customs protection of intellectual property refers to the protection by the customs authorities over the exclusive right to use trademark, the copyright and the copyright-related rights, and the patent right (referred as “intellectual property ”) which are related to import and export goods and are protected by laws and administrative regulations of the People's Republic of China.

 

2.What is Recordation of Intellectual Property Rights at Customs?

The owners of the intellectual property right apply in writhing to the General Administration of Customs of the PRC for recordation of legal status and use of their intellectual property rights, information of their import or export goods, and information of import or export goods of infringement so that the General Administration of Customs can actively protect the owners’ intellectual property rights in the course of surveillance of the import and export goods.

 

3.What kinds of intellectual property right are accepted by the General Administration of Customs of the PRC for recordation?

1. Trademark (excluding service mark) approved for registration by Chinese Trademark Office;

2. International Registration (excluding service mark) registered at WIPO and successfully extended to China upon Chinese Trademark Office’s examination;

3. Patent of invention, design, or utility model granted by State Intellectual Property Office (formerly Chinese Patent Office);

4. Copyright and copyright-related rights owned by citizens or organizations of member countries of Berne Convention for the Protection of Literary and Artistic Works

 

4.When shall the General Administration of Customs make a decision as to whether to approve the applicant’s application for recordation of his intellectual property right after receipt of all the application documents?

The General Administration of Customs shall, within thirty working days from the date of receipt of all the application documents, inform in writing the applicant whether his application for the recordation of his intellectual property right is approved. Where the General Administration of Customs does not approve his application, it shall explain the reason.

 

5.May the General Administration of Customs cancel the recordation?

Yes, it may do so if it finds that the intellectual property right owner fails to provide the authentic facts or documents in application for recordation of the intellectual property right.

After the recordation is cancelled, the General Administration of Customs may not accept the owner’s second application for recordation of the same intellectual property right within one year as of the date of cancellation of the intellectual property right.

 

6.How long is the period of validity of recordation of the intellectual property right? When to apply for renewal of the recordation?

The recordation of customs protection for an intellectual property right shall come into effect from the date of approval of the recordation by the General Administration of Customs. The period of validity of the recordation is 10 years. If the period of validity of the intellectual property right is less than 10 years, the period of validity of the recordation shall be the aforesaid period.

On the premise that the intellectual property right is valid, the owner of the intellectual property right may, within six months before the expiration of the period of validity of the recordation of customs protection for the intellectual property right, apply to the General Administration of Customs for renewal of the recordation. The period of validity of each renewal of the recordation is 10 years.

Where no renewal is applied for on the expiration of the recordation of customs protection for the intellectual property right or where the intellectual property rights is no longer protected under the law and administrative regulations, the recordation of customs protection for the intellectual property right will lose its effect immediately.

 

7.When shall the owner of the intellectual property right go through the formalities for the change or cancellation of the recordation at the General Administration of Customs if the state of the intellectual property right on recordation changes?

Within thirty working days from the date of the change.

 

8.What kinds of change of the recorded intellectual property right shall initiate the owner to apply for the change of the recordation at the General Administration of Customs within thirty working days as from the date of the change?

1. Change on name of the owner of the intellectual property;

2. Change on identified goods of registered trademark;

3. Change on status of licensed use of registered trademark or works or status of exploitation of patent; or

4. Change on contact address, person, or phone, and etc.

 

9.Under what circumstances, shall the owner of the intellectual property right apply to the General Administration of Customs for cancellation of the recordation within thirty working days as from the date of the change?

1. The intellectual property, before the due date of the period of validity of the recordation, ceases to be protected by the law and administrative regulations;

2. The intellectual property on recordation is assigned.

As for the No. 1 circumstance, the General Administration of Customs may actively cancel the recordation by itself or cancel it in light of interested party’s request.

If he gives up the recordation during the valid period of the recordation, the owner of the intellectual property right may apply to the General Administration of Customs for cancellation of the recordation.

 

10.Can recordation of several intellectual property rights be filled in one application form?

No. The intellectual property owner shall submit one application form for each intellectual property right, symbolized by one certificate of a Chinese trademark registration, one certificate of a patent grant, or one certificate of a registration of a piece of works if it is voluntarily registered.

 

11.What contents shall be included on the application form if the owner of the intellectual property right requests the Customs to detain the suspected infringing goods?

The owner of the intellectual property right requesting the Customs to detain the suspected infringing goods shall file a written application and submit the relevant certifying documents and evidence sufficient to prove the obvious existence of the facts of infringement.

The application form shall include the following contents:

(1) the name, place of registration or nationality of the owner of the intellectual property right;

(2) the designation, contents and relevant information of the intellectual property right;

(3) the name of the consignees or consignors of the suspected infringing goods;

(4) the designation and specifications of the relevant information on the suspected infringing goods;

(5) the port where the suspected infringing goods may be imported or exported, the time and the means of transport.

Where the suspected infringing goods are suspected of infringing the intellectual property right on recordation, the application shall also contain the number of the Customs recordation.

 

12.What facts must be proved by the evidences submitted by the owner of the intellectual property right?

1. the fact that the goods the owner of the intellectual property requests the Customs to detain are about to be imported and exported;

2. on the goods, the trademark specimen or works constituting infringement is used or the patent is exploited without the intellectual property owner’s authorization.

 

13.If the intellectual property is not recorded at the General Administration of Customs and the owner of the intellectual property right requests the Customs to detain the suspected infringing goods, must he submit to the Customs a surety? How much is the surety?

Yes, he must. The amount of the surety shall be equivalent to the value of the suspected infringing goods.

 

14.May the owner of the intellectual property modify or withdraw his request for detention of the suspected infringing goods before the Customs take action?

Yes, he may do so, but the Customs should approve his request in advance.

 

15.Under what circumstances, shall the Customs detain the suspected infringing goods?

Where the application filed by the owner of the intellectual property right for detaining suspected infringing goods is in conformity with the provisions of Article 13 of Regulations Regarding Customs Protection of Intellectual Property Rights and the surety according to the provision of Article 14 of these Regulations, the Customs shall detain the suspected infringing goods, notify in writing the owner of the intellectual property right and deliver the Customs detention warrant to the consignee or consignor.

 

16.When shall the owner of intellectual property right file an application for detention as from the date of receipt of the notification from the Customs who discovers that a consignment of import or export goods is suspected of infringing an item of intellectual property right on record? Is surety a must?

Where the Customs discovers that a consignment of import or export goods is suspected of infringing an item of intellectual property right on record, it shall immediately notify the owner of intellectual property right in writing. The owner of intellectual property right shall file application within three working days from the date of receipt of the notification according to the provisions of Article 13 of these Regulations and submit surety according to the provision of Article 14 of these Regulations. The Customs shall detain the suspected infringing goods, notify the owner of intellectual property right in writing and serve the warrant for customs detention to the consignee or consignor. Where the intellectual property right owner fails to file an application or submit the surety within the time limit, the Customs shall not detain the goods.

 

17.If the consignee or consignor holds that his import or export goods does not infringe the intellectual property right of the owner of the intellectual property right, what actions can he take?

He shall submit to the Customs written explanation attached with the relevant evidences within twenty working days as of the date of detention of the goods. If he requests the Customs to release his goods, he must submit to the Customs a surety equivalent to the value of the goods.

If the owner of the intellectual property right fails to institute proceedings in the people's court within due time limit, the Customs shall return the surety.

 

18.If the owner of the intellectual property believes that the goods infringe his intellectual property recorded at the General Administration of Customs and requests the Customs to detain the goods, how much is the surety he must submit to the Customs at the time of filing the request?

1. Amount equivalent to the value of the goods, if the value of the goods is less than 20,000 RMB;

2. 50% of the value of the goods (total amount should not be less than 20,000 RMB), if the value of the goods is between 20,000 RMB and 200,000 RMB;

3. 100,000 RMB, if the value of the goods is more than 200,000 RMB.

Upon the Customs’ approval, the owner of the intellectual property may submit to the Customs a general surety, whose amount shall not be less than 200,000 RMB.

 

19.Under what circumstances, shall the Customs release the detention of the suspected infringing goods?

The Customs shall, in one of the following events, release the suspected infringing goods detained:

(1) where the Customs detains the suspected infringing goods according to Article 15 of these Regulations and does not receive the notification of assistance in enforcement from the people's court within twenty working days from the date of detention;

(2) where the Customs detains the suspected infringing goods according to Article 16 of these Regulations and does not receive the notification of assistance in enforcement from the People's Court within fifty working days from the date of detention and cannot determine that the suspected infringing goods have infringed the intellectual property rights upon investigation;

(3) where the consignees or consignors of the suspected infringing goods, after submitting to the Customs the surety equivalent to the value of the goods, requests the Customs to release his goods; or

(4) where the Customs holds that the consignee or consignors has sufficient evidence to prove that his goods do not infringe the intellectual property rights of the owner of the intellectual property right.