This blog post has been cross posted from the High Technology Section Blog.
By Christopher Bella
Edge Law Group, PC
By the end of 2015, the International Chamber of Commerce expects the global value of counterfeit goods to exceed $1.7 trillion (over 2% of the world's total current economic output), with almost 70% of such goods originating from China. In trying to protect against counterfeiting, practitioners often make the mistake of not registering their clients' intellectual property with countries' customs agencies. Merely relying on trademark registrations will not provide full protection.
For United State's registered trademarks, registration with U.S. Customs is completed by submitting an Intellectual Property Rights e-Recordation (IPRR) application online.
In China, of particular importance is registering trademarks with not only with the China Trademark Office (CTMO), but also with Chinese Customs (the General Administration of Customs or GAC for short). Registration with the GAC is not legally required, but provides the benefit of China Customs officials actively searching for infringing products. China Customs officials often only check outgoing shipments against the GAC database, although they have discretion to check the CTMO database. In reality, there is little to no enforcement by China Customs of trademark infringement without registration with the GAC. In addition, all GAC registrations are published in a centralized, open to the public database, which is frequently used by import/export companies to ensure that the products they are trading do not infringe intellectual property rights.
The following documents are required to register a trademark with the GAC:
A copy of the company's certificate of incorporation;
A copy of the registration the company intends to record with the GAC.
While not explicitly required, it is recommended that the following are included:
Pictures or samples of the company's products and packages bearing the mark or design; and
Names of all parties who are authorized or licensed to use the company's mark or design (if any).
The official fee for each registration is $120 and it normally takes two to three months for the GAC to complete the recording.
Practitioners will be remiss if they overlook registering their clients' intellectual property with countries' customs agencies when trying to combat counterfeiting. A simple registration can go a long way to protecting a client's interests.