Register Your Trademarks In China, And Then Do It Again With China Customs

DAN HARRIS————————

Every year, China Customs seizes tens of thousands of counterfeit goods destined for export from China. Nearly all of the seizures were of goods that infringed registered Chinese trademarks and that had been registered not only with China Trademark Office but also with Chinese Customs.

I am always writing on how the essential first step in your China IP strategy should be to register your trademarks with China Trademark Office. See Talk To Michael Jordan, Not Michael Bastian, About China Trademarks and China: Do Just One Thing: Trademarks. Because China is a first-to-file country, until you register a trademark in China, you have no rights in China in that trademark. But a trademark registration alone will not limit the spread of counterfeit goods; it merely gives you the legal capacity to enforce your rights to that mark. It therefore should be viewed as one of the initial pieces in an overall IP strategy.

If you are concerned about counterfeit goods coming from China, your next step should be to register your trademark with Chinese Customs. This is not a legal requirement, but a practical one. China Customs officials have the discretion to check every outgoing shipment for trademark infringement against the China Trademark Office database, but they virtually always just confine themselves to checking only against their own Customs database. In other words, no separate registration with China Customs means no enforcement by China Customs.

If you register your China trademark with China Customs, Customs will contact you if they discover a shipment of possibly infringing goods. At that point, you have three working days to request seizure of the goods. Assuming you request seizure (and post a bond), Customs will inspect the goods. If Customs concludes that the goods are infringing, they either donate the goods to charity (if the infringing mark can be removed) or destroy them entirely. The cost of destruction, and of storing the goods during the inspection process, will then be deducted from your bond.

Registration with China Customs takes around three to five months and can only be done after China Trademark Office has issued a trademark certificate. China Trademark Office is now issuing trademarks in 9-10 months, which means that within 10-12 months of the date you file your China trademark application, China Customs could be helping stop counterfeit goods of your products from being exported from China to anywhere in the world.

I realize that 12 months can be an eternity in the retail world, but that is in most instances all the more reason to get started right away. Register your trademark in China now. Then register it again with Customs.