What is Customs IPR Enforcement
Customs IPR Enforcement refers to the measures taken by the Customs
according to law against the import and export of IPR-infringed goods,
and it is also referred to as the Border Measures regarding the IPR in
TRIPS.
According to the Regulations of the People’s Republic of China on
Customs Protection of Intellectual Property Rights (“the Regulations”)
promulgated by the State Council of the PRC, the types of IPRs that can
be recorded with the general Administration of Customs (“GAC”) include:
1) exclusive right to use trademark; 2) copyrights and
copyright-associated rights, and; 3) patent rights.
Two Modes of IPR Protection in China
The IPR protection by China Customs may be divided into the two modes of “Protection on Request” and “Protection Ex Officio”:
1) Protection on Request
The Protection on Request refers to the measures taken by the Customs
to detain the goods that are suspected of infringement at the request
of an IPR holder who applies according to the Regulations when such
goods are found to be imported or exported. Because the Customs will not
investigate the suspected infringing goods that are detained on
request, and the IPR holder will therefore have to file a lawsuit with
the people’s court for relevant infringement dispute, the Protection on
Request is also called Customs “Passive Protection” of the IPR.
2) Protection Ex Officio
The Protection Ex Officio refers to the measures taken by the Customs
during their supervision, when they find any import/export goods
suspected of infringing any IPR that is registered with the GAC, to
proactively suspend the customs clearance procedures, inform relevant
IPR holders and detain the suspected goods on the request of the IPR
holders according to the Regulations. Because the Customs will
proactively use their power of office to deter suspected infringing
goods from import and export and have the power to investigate the IPR
infringement and impose penalty on the infringers, the Ex-officio
protection is also called Customs “proactive protection” of the IPR.
An IPR holder shall, before applying for the Customs ex-officio
protection, have its IPR and other information registered with the GAC
according to the Regulations.
Benefits of Customs Recordal of IPRs
1) Customs recordal of IPRs is a prerequisite that China Customs take
proactive protection measures. If an IPR holder fails to have his IPRs
registered with the GAC, China Customs would have no right to take the
initiative to suspend the import/export of infringing goods and to
conduct investigation.
2) After Customs recordal of IPRs, it is much easier for China
customs to find infringing goods when they conduct daily supervision.
3) Lighten economic burden of IPR holders. According to the
Regulations and its implementing measures, where an IPR holder has
registered their IPRs with the GAC, he may enjoy a discount in respect
of the guarantee for detaining suspected infringing goods.
4) Have an effect of deterrent on the infringer. Since the customs
shall be confiscate infringing goods and exert administrative
punishments for the infringer, Customs Recordal of IPRs can produce
deterrent effect on the infringer.
