Under the laws available in China, Intellectual Property right (hereinafter referred to as "IPR") holder records IPR at the General Administration of Customs of the People's Republic of China (hereinafter referred to as "GACC") is an effective way to protect his or its IPR from infringement by others. Thus, how to proceed with the record of IPR at Customs in China? This article will cover this matter.
1. The beneficial of record of IPR at customs
1) To get recorded at the customs is the prerequisite condition for the customs to proactively take protection measures. According to the Article 16 of the Regulation of the People's Republic of China on the Protection of Intellectual Property by Customs, only when the IPR holder record his/her IPR at customs that the customs would have the rights to proactively suspend the imports and exports of the goods and to notify the IPR holder, meanwhile, to investigate and dispose the infringing goods and impose penalty on the infringers.
2) The record will be of help in discovering of infringing goods by customs. When the IPR holder makes a record at customs, he or it needs to provide the information like the legal status of IPR, contact information of oblige, the legal use of the IPR, the situation of the suspected infringing goods and the pictures, photos, and so on. All these information can help the customs to discover the suspected infringing goods and impound the foods by authority.
3) The IPR holder will bear lighter economic burden. Under the condition of record the IPR, the IPR holder needs to provide with the customs no more than one 100,000 for guarantee; otherwise, the IPR holder must provide the guarantee with the value equal to the goods which are applied for impoundment.
4) To record will deter the infringers. Filing records for IPR as early as possible may work as warning to the enterprise and deter these enterprises who used to unscrupulously import and export infringing goods so as to urge them to respect the related IPR consciously.
2.Who has the rights to apply for recording IPR at Customs?
According to the Article 7 of the Regulations of the People's Republic of China on the Protection of Intellectual Property by Customs, IPR holders may apply to the General Administration of Customs of China (referenced to as "GACC") for recording IPR. To be specified, the following IPR holders have the right to apply for recording at Customs.
1) The trademark registrant, including whose trademark registered by the China Trademark Office and international registered trademark in the WIPO which extended to China. (excluding the service trademark)
2) The patent holder.
3) Copyright holder and the stakeholder of the copyright
4) The right holders of the Olympic marks and the World Expo marks.
Please be advised the Customs cannot accept the application filed by the licensee in the name of himself or itself, but under the condition that the licensee acts as the agent of the IPR holder and submits application in the name of the holder is allowed.
3. Which documents are required for filling IPR record at customs?
1) Agent authorization letter which is in the format stipulate by the GACC;
2) Identify certificate of the IPR holder;
3) A copy of certificate of IPR signed and issued by the CTMO or the SIPO.
4) If the IPR holder permits other s to use the IPR, he or it shall provide a copy of the license contract or agreement on entrusted production, processing and import and export;
5) Legal goods and package photo and sample;
6) Known infringement evidences relevant import and export goods;
7) The record fee payment certificate;
8) The other documents that GACC believes necessary.
4.What is the specific flow for IPR record at customs?
1) Filing stage. IPR holders need to take following steps to file an application for IPR record at customs.
Step one: The IPR holder should register as the user of the application system of the IPR record at Customs on the internet.
Step two: The registered user entries into the online application system and filing an online application to record at GACC. In this step, the applicant should file remitter and the IPR and other information should be recorded according to the stipulation of GACC.
Step three: Pay for the record of IPR at customs. The record fee of RMB 800 for each case should be made via bank transfer or Telegraphic Transfer before the online application can be fully processed. Please be advised that the IPR Number and the application No. of record should be noted in the remarks column.
Step four: Print the copy of the online application form and stamp applicant's or agent's chop together with the required documents we list in part Ⅲ must be mailed to the GACC.
2) Examination Stage. The GACC decides either to grant or to refuse record of IPR within 30 working days of receipt of an application and all required documents. Reasons must be given in support of a decision to refuse.
In general, it takes two months at most to complete the procedure of recording IPR at customs. Please be advised that the IPR record at customs following the principle one application for one IPR, that's to say, the IPR holder shall submit applications for each IPR record filing.
5. How long is the record valid?
The record of IPR for protection by customs will take effect on the day when the GACC approves the application for record and the record will be valid for 10 years or equal to the term of the IPR if the protection term of the IPR is less than 10 years. But if the IPR is still in valid after 10 years, the IPR holder can file an application for renewal of the record to the GACC within 6 months prior to its expiration. The renewal will be valid for 10 years or equal to the remaining term of the IPR.
The IPR record at customs will be invalidation if the protection terms of record expires without any application for renewal or the IPR is invalidation.
Summing up the above, we can come to a conclusion that the procedures of IPR record are simple and the cost is low but means a great deal to protect the IPR for the IPR holder. Therefore we are strongly suggested the IPR holders to get their IPR recorded at customs.