CHINA

The China General Administration of Customs (GAC) has launched a new online recordation system from March 1, 2014. The new online system allows the entire application for intellectual property right (IPR) recordation with the GAC as well as any subsequent updates to go paperless. Before launching this new system, IPR owners not only needed to complete an online application form, but also needed to submit the form in hard copy together with other supporting documents to the GAC for recordation. The new system is expected to improve the efficiency, accuracy and reliability of IPR recordation significantly.

In China, IPR recordation offers trademark, patent and copyright owners or licensees protection against the import and export of infringing goods. While recordation is not a prerequisite for obtaining border protection from the GAC, in practice the GAC will rarely take action on their own initiative without an IPR recordation unless they receive a formal complaint from the IPR owner. Upon detecting suspected infringing goods, the GAC will detain the goods and confirm with the relevant IPR owner whether the goods are in fact infringing as per the recordation. In the event that the IPR owner wishes to commence formal enforcement action, the IPR owner is required to post a bond (to guarantee that costs are covered in situations of improper seizure) and file an application together with supporting evidence. The GAC will generally investigate the case and make a determination on whether infringement exists within 30 working days after the seizure.

HONG KONG

Unlike China, there is no “protection by recordation” system in Hong Kong whereby IPR owners can pro-actively and pre-emptively record their registered trademark or copyright with the Customs and Excise Department (Customs) to prevent the import and export of infringing goods. As pre-requisites for Customs to investigate and detain of the suspected infringing goods, the IPR owner is required to: (a) furnish sufficient evidence showing that an infringement of its trademark right or copyright has taken place; and (b) to prove the subsistence of copyright in the work alleged to have been infringed or that the trademark has been registered in Hong Kong.

Therefore, the trademark or copyright owner can usually lodge a formal report with Customs requesting that a border alert be placed on the goods in question after they become aware that there are infringing goods passing through the border.