In a recent interview, the Hong Kong Customs & Excise Department explained the efforts that Customs has taken to tackle counterfeit cosmetics in the Hong Kong market and urged IP right owners to record their IP rights with Customs to facilitate such anti-counterfeiting efforts.

Customs officers in particular mentioned the success that Customs recently had against counterfeits of several popular Korean cosmetics brands.

The introduction of 3D printing technology also allows Customs to print actual 3D samples of the genuine products

From March 2013 to February 2015, Customs investigated 51 cases involving counterfeit cosmetics, in which 74 people were arrested and goods of over HK$1.3 million were seized. For the first two months of this year alone, Customs had already made 3 seizures against counterfeits of a popular Korean cosmetics brand; 6 people were arrested and a total of 109 counterfeit items including CC cream, lip gross, mascara, face masks, etc. were seized. Customs indicated that the seized goods would be submitted to the government laboratory for testing of any harmful substance.

Customs emphasized the importance for brand owners to record their IP rights with Customs in order to facilitate enforcement action. To this end, Customs has reached out to the Consulate General of the Republic of Korea to encourage Korean brand owners to make such recordals.

It is worth noting though that as a condition for Customs to launch a criminal investigation, in addition to recording their IP rights with Customs, the IP right owner must also appoint an authorised examiner who can assist Customs in differentiating between counterfeit and genuine goods and give evidence in court if necessary.

In addition, in an attempt to facilitate the recordal process (especially for overseas brand owners), Customs set up an electronic recordal co-ordination centre in April 2014 to introduce video conferencing and 3D printing technologies. For overseas brand owners, arranging for the required documentation and logistics may take time and sometimes, it may also be practically difficult for the overseas representatives to come over to Hong Kong. However, since the launch of the centre since last year, Customs can now arrange video conferences with the brand owner’s authorised examiner (who may be overseas) which would save the need for the examiner to be physically present in Hong Kong. The introduction of 3D printing technology also allows Customs to print actual 3D samples of the genuine products which would facilitate the counterfeits verification process during their operations. Customs cited the example of a hair curler manufacturer who took advantage of this 3D printing technology which allowed Customs to take swift enforcement action in a trade fair last year.

Conclusions

Under Customs’ recordal system, IP owners may record their copyright and/or Hong Kong registered trademarks with Customs when there is a suspected case of infringement. With the recordal, Customs will then be able to investigate suspected counterfeits either on its own initiative or upon report by the right owner. During the recordal meeting, Customs will take the opportunity to assess whether the authorised examiner is capable of differentiating between the counterfeit goods and the genuine ones and whether he or she is a competent witness.

The initiatives described above demonstrate Customs’ determination in strengthening IP protection in Hong Kong. Brand owners wherever situated are recommended to record their IP rights with Customs when a suitable opportunity arises – this would even include cases where the counterfeit goods are not manufactured or sold at a physical place in Hong Kong but are accessible to users in Hong Kong via the Internet (which has become increasingly common).