Registration for Customs enforcement of intellectual property rights (IPR) means that the intellectual property right ("IPR") holders, in accordance with the Regulations on Customs Protection of Intellectual Property Rights, notify in writing the General Administration of Customs of the legal status of their IPRs, the conditions of relevant goods, the legal application of their IPRs and the import and export of infringing goods, in order for the Customs to proactively take measures to protect IPRs in the process of import and export supervisions.
According to the Regulations on Customs Protection of Intellectual Property Rights enacted in 1995, IPR registration is a prerequisite for IPR holders in seeking protection from the Customs. The Regulations on Customs Protection of Intellectual Property Rights revised in December 2003 no longer require IPR holders to make IPR registration before applying for customs protection. However, for some IPR holders, such as trademark right holders, whether to be registered or not could make a big difference mainly consisting in:
1. Registration is the precondition for the Customs to take the initiative for protection measures. According to provisions of the Regulations, if an IPR holder fails to register its IPR with the Customs in advance, the Customs will have neither the power to proactively suspend the import and export of infringing goods nor the power to investigate and dispose the infringing goods;
2. Registration helps the Customs to find infringing goods. Though, according to the Regulations, IPR holders after registration are still required to apply for protection measures when infringing goods are found out upon entry or exit, however, in practice, whether the Customs can find the infringing goods mainly depends on the Customs' inspection. As IPR holders are required to provide information such as the legal status of their IPRs, their contact information, the legal use of IPR, information about suspected infringing goods, relevant pictures and photos, it is possible for the Customs to find out suspected infringing goods and take the initiative to detain the goods during daily supervision process. Therefore, the IPR registration in advance can timely protect the legitimate rights and interests of the IPR holders;
3. Registration can mitigate the economic burden on IPR holders. According to the implementing measures for the Regulations on Customs Protection of Intellectual Property Rights, in the mode of customs protection ex officio, the maximum guarantee deposit provided to the Customs by an IPR holder will not exceed RMB 100,000. If an IPR holder has no IPR registration in advance, he cannot enjoy the said benefit and must provide guarantee equivalent to the value of the goods for which he requires detention;
4. Registration may have deterrent effect on infringers. As the Customs will confiscate the infringing goods found in import and export and will impose administrative penalty on infringing importers and exporters, timely IPR registration can produce warning and deterrence on the infringers and prompt them to respect IPRs consciously. In addition, some enterprises without intention to export infringing products can also search for the IPR registration information to see whether their goods are involved in infringement.
Appendix 1: IPRs Accepted for Registration by the General Administration of Customs
According to Article 2 of the Regulations on Customs Protection of Intellectual Property Rights promulgated by the State Council, the IPRs protected by China Customs should refer to the exclusive right of trademark, copyrights and copyright-related rights, and patent rights relevant to import and export goods and under the protection of China laws and administrative regulations. So, registration for customs protection may be applied to the following IPRs:
1. The trademarks (excluding service trademarks) approved for registration by the Trademark Office of the State Administration for Industry and Commerce of China;
2. The internationally registered trademarks (excluding service trademarks) with the World Intellectual Property Organization and extended to China;
3. Inventions, designs and utility models that are granted patent rights by the State Intellectual Property Office of China (including the former Patent Office of China); and
4. Copyrights and their related rights held by the citizens or organizations of member countries of Berne Convention for the Protection of Literary and Artistic Works.
Appendix 2: Qualifications of Registration Applicants
Only IPR holders can apply for registration for customs IPR protection. The "IPR holders" mentioned here refer to trademark registrant, patentee, copyright holders and copyright-related right holders as provided by China’s Trademark Law, Patent Law and Copyright Law.
Licensed IPR users shall not apply for IPR registration in their own names, but they may apply on the commission by trademark registrants, patentees, copyright holders and copyright-related right holders as their agent.
Appendix 3: Qualifications and Roles of a Contact Person for Registration
A contact person for registration refers to the person designated in an IPR holder’s Customs IPR protection application to handle the matters concerning the IPR enforcement. The contact person is not only responsible for contacting the General Administration of Customs to make IPR registration but for communicating and cooperating with port-based Customs houses on detention of suspected infringing goods after the IPR registration. As port-based Customs houses have limited time in determining suspected goods, it is crucial to timely obtain assistance from the contact person for customs enforcement.
Currently, the General Administration of Customs sets no restriction on the qualification of a registration agent, which means the contact person may be the IPR holder himself or a person from his firm, or his agency or a person from the same agency. Nevertheless, in order to facilitate the cooperation with the Customs and effectively perform the legal liabilities, a contact person shall meet the following conditions:
1. The contact person must be within the territory of China. The registration agent shall be an organization or natural person within the territory of China. The term "the territory of China" refers to the mainland territory of China;
2. The contact person shall simultaneously assume the duties of registration and of contact and cooperation with port Customs houses. One of the roles of the IPR registration is to establish a relationship between IPR holders and the Customs. If the registration agent is irresponsible for the communication and cooperation after registration, the Customs will be unable to timely notify the IPR holders of suspected infringing goods;
3. There should not be more than two contact persons for one registration. Currently, the General Administration of Customs requires that the number of contact person(s) in each registration application shall be one or two. More than two may cause confusion to the information transmission between the Customs and an IPR holder.
4. The contact person shall always be ready to assist and cooperate with the Customs. Many Customs houses have implemented 24-hour clearance, but some infringers usually import and export infringing goods at weekend or other non-working hours. In order to promptly identify the goods and decide whether to suspend the clearance, the Customs need cooperation from contact persons at any time. So the contact persons should be always prepared for cooperation with the Customs.
Appendix 4: Meaning of "One IPR, One Application"
According to Article 6 of the Implementing Measures for the Regulations of the People's Republic of China on Customs Protections of Intellectual Property Rights, an IPR holder shall separately submit one application for each IPR to register. Where an IPR holder applies for registering an internationally registered trademark, he shall submit one application for each category of commodity separately. The above provisions can be summarized as "one IPR, one application".
The so-called "one IPR” refers to: (1) one trademark registration certificate; (2) one patent certificate; (3) one piece of works (or one registration number for a work whose copyright has been voluntarily registered). The international registration of marks usually consolidates all commodities using one trademark into one registration certificate, but the Trademark Office of China will issue a trademark registration certificate for an internationally registered trademark in light of each category of commodity, so the holder of an internationally registered trademark shall, when applying for registration with China Customs for IPR protection, separately submit one application for each category of commodity listed in the international registration certificate of the trademark.
General Administration of Customs of the People's Republic of China
Address: No.6. Jianguomennei Avenue, Dongcheng District, Beijing, China Postcode: 100730