China counterfeit lawyers

As we have written a number of times — see China Trademarks are the Most Important Thing of All and China’s New Trademark Environment — the essential first step in most any China IP strategy is to register your trademarks with China’s Trademark Office. Because China is a first-to-file country, until you register a trademark in China you have no rights in that trademark. But a trademark registration alone will not limit the spread of counterfeit goods. A trademark registration merely gives you the legal capacity to enforce your rights to that mark and it should properly be seen as just one of the pieces in your overall IP strategy. The same holds true for your products protected by a Chinese registered copyright or patent.

For any company concerned about counterfeit goods coming from China, the next step should be registering your trademark with China Customs. This is not a legal requirement but a practical one: though Customs officials have discretion to check every outgoing shipment for trademark or copyright or patent infringement against the Trademark Office database, in reality they only check against the Customs database. No separate registration with Customs means no enforcement by Customs. 

Registering your trademark, copyright and/or patent with Customs requires you to — at a minimum — submit the following documents with your application:

  • A copy of your business license or certificate of incorporation (or other legal document confirming the existence your company). These documents must be in Chinese or translated into Chinese.
  • A copy of the Chinese registration certificate for your trademark, patent or copyright.
  • A Power of Attorney.
  • Pictures of the goods for which you are seeking protection and their packaging.

If you register your IP with China Customs, they will contact you any time 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 subsequently concludes the goods are infringing, they typically 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 be deducted from your bond. As a practical note, do not expect any transparency regarding the destruction process or invitations to witness it — you are just going to have to take China Customs’ word on it.

Registration with China Customs generally takes three to five months and can be done only after China’s Trademark Office has issued a trademark certificate. The latter currently takes approximately twelve months, which means that within fifteen months of the date you file your trademark application, China Customs could be helping you by stopping counterfeits of your products from being exported from China. The same generally holds true for copyrights and patents.

In addition to the registrations discussed above, it almost always will make sense for someone to meet with China Customs on your behalf to introduce your product and advise officers on how to distinguish between genuine and counterfeit products. This will also show Customs you are willing to work with them to go after counterfeits. Seek out meetings at key ports and accept all invitations to Customs workshops, even if at first glance the port in question does not seem particularly critical.

Fifteen months can be an eternity in the retail world, so take action right away: Register your China trademark now, then register it again with China Customs. If you do this, you will almost certainly see a reduction in counterfeiting of your products, regardless of your industry and manufacturing locations.

Photo of Fred Rocafort Fred Rocafort

Fred is a former diplomat who joined Harris Bricken after more than a decade of international legal experience, primarily in China, Vietnam, and Thailand. His wide range of experience includes starting and operating his own business in Asia, working as an in-house counsel…

Fred is a former diplomat who joined Harris Bricken after more than a decade of international legal experience, primarily in China, Vietnam, and Thailand. His wide range of experience includes starting and operating his own business in Asia, working as an in-house counsel for a Hong Kong-based multinational, as well as many years as a State Department official, providing a client-centric perspective to his legal work. Fred co-hosts Harris Bricken’s weekly Global Law and Business podcast, which covers legal and economic developments in locales around the world to decipher global trends in law and business with the help from international guests.

Fred began his career overseas as a U.S. vice-consul in Guangzhou, China, adjudicating thousands of visa applications and advocating for fairer treatment of American companies and citizens in China and for stronger anti-counterfeiting enforcement. After entering the private sector, Fred worked at a Shanghai law firm as a foreign legal advisor and later joined one of the oldest American law firms in China. He also led the legal team at a Hong Kong-based brand protection consultancy, spending most of his time out in the field, protecting clients against counterfeiters and fraudsters from Binh Duong to Buenos Aires.

Fred is an ardent supporter of FC Barcelona—and would be even in the absence of Catalan forebears who immigrated to Puerto Rico in the mid-1800s. An avid explorer of Hong Kong’s countryside, he now spends much of his free time discovering the Pacific Northwest’s natural charms.