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CUSTOMS IP REGISTRATION
Customs Protection Registration For Intellectual Rights
HOW TO FURTHER PROTECT YOUR IP IN CHINA
One for the first steps to protect your intellectual Property in China is to register your trademark, patent and copyright in China directly or through an internationally IP treaty recognized by China. However, to exercise your rights through an increased ability to identify and enforce, it is strongly recommended to register your IP with China customs.
Customs IP registration is a critical tool for China customs to protect intellectual property rights at the border. As an IP owner you can register the legal status of your intellectual property rights by indicating the type of goods and the legal use of the intellectual property rights. As a result, customs can take the initiative to implement the protection in the supervision process of goods passing through the border. IP owners who register with customs may provide information to the customs about authorized manufacturers and importers as well as potential unauthorized shipments to aid in customs to proactively detain goods suspected of violations.
What kind of intellectual properties can be registered for Customs protection?
According to Article 2 of the Regulations of the People’s Republic of China on Customs Protection of Intellectual Property Rights, “customs protection of intellectual property rights” refers to trademark rights, copyrights and the rights related thereto, and patent rights that are related to import and export goods and that are protected by PRC laws and administrative regulations.
The following intellectual property rights can apply for customs protection:
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Trademarks approved for registration by the Trademark Office of the State Administration for Industry and Commerce Trademark Office of the People’s Republic of China (except for service trademarks); and
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International registered trademarks registered with the World Intellectual Property Organization that are extended to China (except service trademarks); and
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Invention Patent, Utility Patent and Design Patent by the National Intellectual Property Administration (formerly as China Patent Office);
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Copyright and copyright-related rights held by the citizens or organizations of member states of the Berne Convention for the Protection of Literary and Artistic Works.
Why is it important to file IP registration with customs
According to the Regulations of People’s Republic of China on the customs protection of Intellectual Property Rights promulgated in 1995, the application for the protection of intellectual property rights is a prerequisite for the owner of intellectual property rights to seek protection from the customs. The Regulations of People’s Republic of China on the customs protection of Intellectual Property Rights revised in December 2003, amended that it no longer required the holders of intellectual property rights to register their intellectual property rights before applying to the customs for protection. However, for some intellectual property rights holders, such as trademark rights holders, there is a great difference whether to file or not, mainly reflected in following aspects:
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It is a prerequisite for the customs to take active protection measures.
According to the Regulations on the Customs Protection of Intellectual Property Rights, if the owner of intellectual property rights registers their intellectual property rights for Customs protection in advance, the Customs has the right to take the initiative to suspend the import and export of the infringing goods discovered by the owner and investigate and deal with the infringing goods. Otherwise, the customs has no power to suspend the import or export of infringing goods on its own initiative when it discovers that they are about to enter or leave the country, nor does it have the power to investigate the infringing goods.
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It helps customs to find infringing goods.
When registering for protection, the intellectual property right holder shall provide the legal status of the intellectual property, contact information of the owner, the legal use of the intellectual property, the suspected infringing goods, the relevant pictures and photos etc., so that the customs may find suspected infringing goods in the daily supervision process and take the initiative to detain them. Therefore, the registration of intellectual property rights can make the legitimate rights and interests of the right holder to be timely protected.
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The economic burden of intellectual property right holder is relatively light.
In a case that the intellectual property right holder has not registered the customs protection and they wants the customs to detain the suspected infringing goods, they must provide a guarantee equivalent to the goods they wants to detain. If registered, such guarantee would be below an amount of 100,000 CNY. This is especially important for trademark owners.
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Serve as a deterrent to the infringer.
Since the customs has the right to confiscate the import and export infringing goods and gives administrative punishment to the import and export enterprises, the early registration of intellectual property rights can warn and deter those enterprises who import and export infringing goods without hesitation in the past, prompting them to consciously respect the relevant intellectual property rights. In addition, some enterprises that are not exporting infringing products maliciously may also understand their contracted processing and export of goods may constitute infringement through checking intellectual properties registration status on the customs’ website, preventing the occurrence of customs detention of goods and suffer from economic loss.
Who has the right to file?
Only the intellectual property right holder can apply to the Customs as an applicant for customs protection. Intellectual property right holders refer to the trademark registrant, patentee, copyright holder and copyright-related right holder as stipulated in the Trademark Law, The Patent Law and the Copyright Law of China.
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The General Administration of Customs cannot accept applications filed by the intellectual property licensee in its own name but may accept the application filed by the licensee as an agent in the name of the intellectual property right holder. Rights holders outside of Mainland China must entrust a natural person, legal person or other organization within the territory (such as an office established within the territory by an overseas right holder) to apply to the Customs General Administration for handling the application.
What are the documents required for the custom protection registration?
In accordance with the provisions of the Regulations on the Customs Protection of Intellectual Property Rights, applicants shall provide the followings:
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Registration form for customs protections;
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Copy of the intellectual property right holder's personal identity document, copy of the business license or copy of other registration documents. If filed by others, the power of attorney and the identity document of the appointed shall be submitted;
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IP Certificates
TRADEMARKS
A copy of the Trademark Registration Certificate issued by the Trademark Office of the Administrative Department for Industry and Commerce under The State Council. Where an applicant is approved to change trademark registration matters, renew trademark registration, transfer a registered trademark, or apply for the filing of an international registered trademark, it shall also submit a trademark registration certificate issued by the Trademark Office of the Administrative Department for Industry and Commerce under The State Council.
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COPYRIGHTS
A copy of the certificate of voluntary registration issued by the copyright registration authority and the photo of the work authenticated by the copyright registration authority. Where the applicant has not voluntarily registered his/her copyright, he/she shall submit samples of his/her works which can prove that the applicant is the copyright owner and other evidence relating to copyright.​
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PATENTS
A copy of the patent certificate issued by the Patent Administration Department under The State Council. Where the patent authorization exceeds 1 year from the date of announcement, a copy of the patent registration book issued by the Patent Administration Department under The State Council within 6 months before the applicant filed the application for filing shall also be submitted. Where an application is filed for the filing of a patent for utility model or design, an evaluation report on the patent right made by the Patent Administration Department under The State Council shall also be submitted.
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Where the intellectual property right holder authorizes another person to use a registered trademark, work or exploit the patent and signs a license contract, a copy of the license contract shall be provided; Where no licensing contract is signed, a written statement concerning the licensee, the scope of the licensing and the period of the licensing shall be submitted.
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Photos of the goods and the packaging of which the intellectual property right holder has lawfully exercised the intellectual property right.
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Evidence of known import and export infringing goods. Where the infringement dispute between the intellectual property right holder and another person has been dealt with by the People's Court or the Intellectual Property Authority, copies of relevant legal documents shall also be submitted.
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Other documents or evidence deemed necessary by the General Administration of Customs.
The customs will review the application and notify the user of the result in writing within 30 business days after successful submission.
Validity of filing
In accordance with Article 10 of Regulations of People’s Republic of China on the customs protection of intellectual property rights, the customs protection on Intellectual Property Rights shall be effective as of the date on which the General Administration of Customs grants the approval and shall be valid for 10 years, unless the right itself expires before that. Where the Intellectual Property Rights are valid, the owner of the Intellectual Property Rights may, within six months prior to the expiration of the customs protection, apply to the General Administration of Customs for a protection extension. The term of validity of each extension shall be 10 years. Where no application for extension has been made upon the expiration, or the Intellectual Property Rights are no longer protected by laws or administrative regulations, the registration for customs protection of Intellectual Property Rights shall immediately become void.