In the absence of trade mark rights, is Copyright Customs recordal an effective last-minute protection replacement?
Brands often grow their presence at rapid speeds in China. Sometimes this can happen in a way which hasn’t allowed time for the groundwork to be set by way of registering a trade mark or other intellectual property rights.
The absence of these rights offers counterfeiters an opportunity to flood the market with a range of counterfeit and copycat goods. Most of these goods originate in China where the brand owner may still be struggling with trade mark registration and subsequently has limited means to fight against booming infringement. In situations like this, a key tool in the fight against counterfeiters can be filing a copyright recordal with China Customs as an interim measure. This can be undertaken in the absence of a trade mark right.
Recently a fast-growing casual footwear brand met considerable difficulties in its trade mark registration in China, due to several prior similar marks on the registry. Considering its trade mark is a combination mark and its device element is subject to copyright protection, we recorded the copyright with China Customs. On the 3rd day after the recordal approval, Ningbo Customs halted two 40ft containers of counterfeit shoes based on this copyright recordal. These shoes were destined for sale in markets in South America.
Had this case ended up in the Courts, it would have been easily arguable that the counterfeit goods, which bore the combination mark, were reproductions of the copyrighted artwork. However, as far as Customs IP rights protection is concerned, copyright recordal of this nature is functional and acts as a replacement of trade mark rights against counterfeit goods.
A total 5,290 copyrights were recorded in China till December 22, 2021, according to China Customs.
In the same way a trade mark recordal is done, Customs officers carry out ex officio inspection against the copyright infringing goods. The CCGA (China Customs General Administration) 2021 IP report shows a total 26,060 pcs (across 244 shipments) copyright infringing goods were seized in 2020.
Unlike trade mark, copyright infringement is more complicated and more challenging for Customs officers to handle. Of the infringing goods seized by China Customs in 2020 99% were made on trade marks, with copyright related seizures accounting for less than 1%.
It is unrealistic to rely on Customs officers being proactive and more efforts are needed by copyright owners to raise Customs officers awareness of their “copyright”, their products and the infringement situation they are facing in China. There are some key steps which you can undertake to ensure that your copyright recordal is more effective.
- Active engagement with port Customs officers by attending trainings (on-line or offline). Rouse regularly organises Customs training events with port Customs for its clients
- Identifying key ports from which the copycats most likely be exported and paying visit to key port Customs where possible.
- Carrying out an in-depth investigation against large scale infringers and providing specific shipping information to port Customs so to initiate the first seizure which gets the ball rolling. Our experience shows the seizure chances increase considerably after first seizure has occurred.
- Timely sharing/updating intelligence concerning trend/pattern of infringement, with Customs.
Written by: Zoe Liu
What other problems does your brand need to prepare for?
Get insight and professional advice on the common issues and concerns businesses need to understand and may be facing when entering into China:
- Is your brand moving into new markets? Look (and search) before you leap! What obstacles do brands typically face when expanding overseas?
- How should your brand fend off copycats? What should you do when someone registers your trade mark before you?
- Losing control of your brand? What are the risks of entering the market in China with a local distributor?
For further information, please contact:Douglas Clark, Principal,
Global Head of Dispute Resolution, Rouse
dclark@rouse.com
