Did you know?
In 2024, Hong Kong Customs handled a total of 31,242 cases, an increase of 63% from 2023, with 783 cases involving intellectual property rights infringement and the seizure of 4 million items worth HKD309 million. In a recent 1-month operation alone, Hong Kong Customs confiscated nearly 157,000 suspected counterfeits, with a total estimated market value of over HKD72 million.
Why does this matter to you?
The recent widely-reported seizures by Customs of counterfeits of the viral Labubu dolls is an important reminder of the crucial role that Customs authorities play in combating counterfeits and enforcing intellectual property rights. Our IP Partner, Kelley Loo, was recently quoted in a South China Morning Post article discussing the enforcement challenges surrounding counterfeit versions of popular characters such as Labubu and Chiikawa (see SCMP article here).
Hong Kong’s geographical proximity to mainland China, and its long-established transportation links, make it a vital centre for the transshipment of counterfeit products. Hong Kong is frequently used as a sales and distribution centre and many Chinese factories (including infringers) will have headquarters or branches in Hong Kong. As the first line of defence in protecting intellectual property rights, Hong Kong Customs can inspect, detain and seize counterfeit goods at the border, warehouses or other locations, as well as arrest suspected infringers.
However, in order to take advantage of Customs’ assistance, it is important for IP owners to record their rights with Customs. In order for Customs to take action, an IP owner is required to appoint a competent examiner and Customs expects the IP owner and its authorized examiners to provide active assistance including:
- Completing the recordation procedure which includes a formal interview to assess the examiner’s competence and supporting documentation;
- Assisting in raid actions against counterfeiting activities;
- Assisting in the inspection of goods seized from raid actions;
- Preparing and submitting witness statements;
- Attending court in Hong Kong to testify and give evidence.
The recordal process in Hong Kong is more rigorous than in some other jurisdictions, requiring the submission of the examiner’s relevant background information, including his/her job position and job duties, relevant experience, skills, training, expertise and knowledge in relation to:
- intellectual property rights enforcement for the trade mark owner;
- distinguishing between genuine goods, counterfeit goods, and parallel-import products;
- the trade mark owner’s product manufacturing, sales and distribution network and capabilities, licensing arrangements etc.; and
- any other relevant information that Customs may request the examiner to provide depending on the specific facts of the case.
As mentioned above, Hong Kong Customs has proactively reached out to the trade mark owners of Labubu and the Japanese manga character Chiikawa, to encourage them to record their rights with Customs’ intellectual property investigation bureau, in order to facilitate investigations into suspected piracy or counterfeiting activities. This is crucial as Customs requires the IP owners to determine whether confiscated materials are real or counterfeit before they can take any criminal action against the infringers.
Hong Kong Customs does not charge for the recordation services, investigations and enforcement actions and, unlike some other jurisdictions, does not require IPR owners to post a bond or guarantee to detain infringing goods. However, active collaboration between IPR owners and Customs is important to enhance the effectiveness of enforcement actions.
Want to know more?
Our team has extensive experience advising a wide spectrum of our clients in relation to Customs actions against counterfeit products in Hong Kong, resulting in the successful enforcement of our clients’ rights, seizure, forfeiture and destruction of the relevant counterfeit goods, and criminal prosecution and conviction of the relevant offenders. We also provide internal training to our clients’ staff and examiners to facilitate their provision of the required assistance to Customs.
