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Using China Customs to Protect your IPR
29 February 2011
Welcome to the webinar
Philippe Healey
China IPR SME Helpdesk Project Manager
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‘Contact Us’ section
The China IPR SME Helpdesk
@iprchina
Fan page: “China IPR SME Helpdesk”
"China IPR"
The China IPR SME Helpdesk provides free, confidential, business-focused advice
relating to China IPR to European Small and Medium Enterprises (SMEs).
Helpdesk Enquiry Service – [email protected]
Training & Events
Materials
Online Services - www.china-iprhelpdesk.eu
Today’s Speaker
• Fabio Giacopello
• Of HFG Law Firm & IP Agency
• e-mail: [email protected]
• Direct Dial: +86 21 5213 5500
Agenda
• Laws and Regulations
• General procedure of custom action
• Why register IPRs at General Administration of Customs of China (GACC)
• How to register your IPRs at GACC
• Case studies
• Key lessons learnt
Laws and Regulations
• Regulation of the People’s Republic of China on the Customs Protection of Intellectual Property Rights
– Revised in 2010
– Prohibits the import and export of goods infringing upon IPRs.
• Rules of the Customs of the People’s Republic of China for Implementing the Regulations on Customs Protection of IPRs
– Promulgated in 2008
• Customs Law of the People’s Republic of China – General provisions on the rights of customs
• IP Laws and Regulations in China (Trademark Law, Patent Law, Copyright Law, etc.)
• Regulations enacted by the General Administration of Customs of China
General procedure of custom action
Archival
Filing of IPR
Rights
Custom
Notification
of Suspected
Infringing
Goods
Application
for
Detainment
from right
holder
Bond
payment
from right
holder
Written statement with
evidence from
Consignee of
Consignor
Notify the consignee or consignor
of no less than the
equivalent value of the
goods
A guaranty from
the consignee
or consignor
Asking
for a
release
RELEASE
Right holder
files a lawsuit
at a people’s
court
No lawsuit
filed
Custom
Investigation
No
Infrin
geme
nt
Not
Sure
Infrin
geme
nt
Court
Decision Confiscation
Patent Infringement
only
registered IPRs
only
20 working
days from
application
50 working days
from detention
Poll – (Did you know?)
Where shall you register your IPRs?
A. Any custom
B. GACC (General Administration of
Customs of China) Correct answer: B
Port Customs in China
Shanghai
Guangzhou
Shenzhen
Ningbo
Hangzhou
Tianjin
Qingdao
Gongbei
Fuzhou
Nanjing
Wuhan
Beijing
Shenyang
Harbin
Kunming
Huangpu
Xiamen
Xian
Lasa
Wulumuqi
And more…
Why register IPRs at GACC?
– Chinese customs do not act on their own initiative if no registration has been filed by the right owner.
– With registration, customs will automatically suspend the clearance process and notify the IPR holder in writing if signs indicate a possible infringement of the recorded right. Otherwise, right owner has to make a request first to apply for a seizure.
– With registration, customs will initiate its own investigation and will speed up the case.
– Save money on investigation
THE BEST PROTECTION IS PREVENTION
• Statistics
Why register IPRs at GACC?
Number of release Number of detention
Number of release and detention in
Chinese customs in 2010
Why register IPRs at GACC?
Type of IPR Number of products
Ratio Worth (RMB)
Ratio
TM 128,949,654 96.525% 257,105,378 92.77%
Copyright 207,422 0.16% 2,136,308 0.77%
Patent 4,392,275 3.29% 17,661,962 6.37%
Olympic/expo symbols
50,218 0.04% 249,668 0.09%
• Statistics • 2010 custom statistics on infringing goods with regard to the type of IPRs
What IPRs can be registered at GACC? – Domestic Trademarks approved by CTMO (service
trademarks excluded)
– International trademark registration extended to China via Madrid (service trademarks excluded)
– Invention patent, design patent and utility patent granted by SIPO
– Copyright and copyright related rights owned by citizens or entities from member countries of Berne Convention
– Olympic symbols and World Expo logo marks
How to register IPRs at GACC?
Poll – (Did you know?)
Who can register IPR at GACC?
A. Right holder
B. Licensee
C. Agent of right
holder
Correct answer: A
How to register [cont’d]
Where to register?
-- http://202.127.48.151/applyrecord/
What can you do with the online system?
A search of recorded IPRs • IPR holder
• IPR title
• IPR No.
• IPR type
How to register [cont’d]
• What can you do with the online system? – Register your IPR
• Register an account first
• Fill in the information – Name of the IPR holder
– Address
– Nationality
– Contact information (within the territory of PRC, could be an agent)
» Contact person
» Address
» Phone number
» Email address
• Confirm your registration by clicking the link in the confirmation email – Re-login
• Record your IPR
How to register [cont’d]
Record your IPR: TM
How to register [cont’d]
Explanation of each blank
Name of the TM
Approved by
TM No.
Class
Goods designated
Duration
Record your IPR: Patent
How to register [cont’d]
Name of the patent
Type
Patent No.
Patented product
Duration
Name of the patent shall be consistent with the
one on the patent certificate
Record your IPR: Copyright
How to register [cont’d]
Name of the work
Registration No.
Products that bear the work
Duration
Type of the work
A generic name of products that may use the work
Record your IPR
– Upload pictures (of your mark, product, packages)
– Information of authorized users (licensees, contracted distributors, etc.)
– Pay fees
– Mail files to GACC
• Power of attorney
• Identity of the agent (copy of the ID card or business license)
• Copy of the TM certificate
• Certificate of payment
How to register [cont’d]
Poll – (Did you know?)
How long will your registration last?
A. Forever
B. 10 years
C. As long as your
IPR duration
Correct answer: B
or C, whichever is
shorter
• Change of information
– Change of owner (assignment occurred), change of agent, revocation of the registration
• Filing change in writing to GACC
– Other change
• Filing change through the online system
• GACC decides either to grant or to refuse registration of IP rights within 30 working days of receipt of an application.
How to register [cont’d]
Case Study
Recent cases -- Chuangchun
Custom detained 4560 pairs of
shoes labeled “MICKEY”, “D&G”,
and “NIKE”
Case Study
Recent cases – 1125
infringing cell phones
were found hiding in
torch lights and trousers
(Xiamen Custom)
Case Study
Recent cases –
1563 infringing
disks were found
in parcels
(Fuzhou Custom)
Case study
Port customs suspends release of suspect goods and notify the contact person registered.
Right holder applies for detention of suspect goods and pays bond.
Port customs detains suspect goods and begins investigation.
Then, what’s next…
Within 3 working days from the
date of receipt of the custom
notice
Within 30 working days from the
date of retention
Case study
– What will happen to the infringing goods?
• Use them for public welfare
• Sell them to the IPR holders if they are willing to buy
• Destroy the goods if the infringing features cannot be eliminated completely
– Legal liability of the infringer
• Confiscation of the infringing goods
• Damages of the right holder
• Potential criminal liability
Key Lessons Learnt
• THE BEST PROTECTION IS PREVENTION
• REGISTER YOUR IPRs at GACC
Q&A
• Fabio Giacopello
• Of HFG Law Firm & IP Agency
• e-mail: [email protected]
• Direct Line: +86 21 5213 5500
Place photo
here
Helpdesk Guide: Guide to Using Customs to Protect your IPR in China
http://www.china-iprhelpdesk.eu/docs/publications/Customs.pdf
To access all our publications click here
Upcoming Helpdesk Webinars
Save the dates of our upcoming webinars and events: - Branding and Trade Mark Protection in China: Thursday 29 March, 2012 - Protect your IPR when Conducting R&D in China: Thursday 26 April, 2012
Thank you
The China IPR SME Helpdesk provides free, confidential, business-focused advice
relating to China IPR to European Small and Medium Enterprises (SMEs).
Helpdesk Enquiry Service – [email protected]
Training & Events
Materials
Online Services - www.china-iprhelpdesk.eu
For more information please contact the Helpdesk:
Room 900, Beijing Sunflower Tower
No. 37 Maizidian Street
Chaoyang District
Beijing 100125, P.R. China
Hotline number: +86 (10) 6462 0892
