Registration and Protection of Trademarks in China Chapter XVI: Trademark Infringement and Remedies (3/6)-administrative remedies

Registration and Protection of Trademarks in China

Chapter XVI: Trademark Infringement and Remedies (3/6)-administrative remedies: protection from local AMR and protection at Customs

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Administrative remedies

The trademark registrant or an interested party may file a complaint with and request for protection from an administrative authority when encountering trademark infringement. Such administrative authorities include both local Administration of Market Regulation and local Customs. However, the Customs can only handle cases involving imported or exported goods.

1. Protection from local Administration of Market Regulation

The trademark registrant or an interested party may lodge a complaint with a local Administration of Market Regulation at or above county level and request for an investigation and punishment on trademark infringement. The local Administration of Market Regulation may also conduct ex officio actions to investigate and deal with trademark infringement.

The Administration of Market Regulation is only responsible for investigating and stopping trademark infringement in the market, but not for solving the compensation dispute between the parties. Where a dispute arises in connection with the amount of damages, the parties may request the Administration of Market Regulation to mediate. The agreement reached by the parties through the mediation is not as enforceable as a court decision. Where the parties fail to reach an agreement in the mediation or fail to perform the mediation agreement, they may bring a lawsuit to the court.

Where the Administration of Market Regulation is of the opinion that the infringement is established, it shall order the infringing party to immediately cease the infringing acts, and shall confiscate and destroy the infringing goods and instruments mainly used to manufacture the infringing goods or forging the registered trademark. Where the illegal business revenue is RMB 50,000 yuan or above, a fine up to five times of the illegal business revenue may be imposed thereon; where there is no illegal business revenue or the illegal business revenue is less than RMB 50,000 yuan, a fine up to RMB 250,000 yuan may be imposed thereon. If he or she has committed trademark infringement twice or more within five years or falls under any other serious circumstances, the infringing party shall be subject to a heavier punishment.

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2.????? Protection from local Customs

(1)?? Measures for Customs protection

Customs protection refers to measures taken by the Customs to investigate, stop and punish trademark infringement acts in the course of importing or exporting goods. There are two ways to start a Customs protection procedure. One is to start by the trademark registrant or an interested party. Where a trademark registrant or an interested party finds that suspected infringing goods are to be imported or exported, he may request the local Customs at the relevant port to detain such goods. The other is to initiate by the Customs. Where the local Customs finds any imported or exported goods suspected to infringe upon a registered trademark recorded at the Customs, it shall notify the right holder of the registered trademark. Customs recordal of the registered trademark is the prerequisite for the Customs to take the initiative to start protective measures.

When requesting the Customs to detain the suspected infringing goods, the trademark registrant or an interested party shall provide the following information in the application submitted to the Customs and a guarantee not exceeding the equivalent value of the goods to be detained:

① The name, registration place or nationality of the right holder;

② Information related to trademark rights, such as trademark name, trademark number, designated class, designated goods, etc.;

③ The names of the consignee and consignor of suspected infringing goods;

④ The name and specification of suspected infringing goods;

⑤ The port where the suspected infringing goods may be imported or exported, the time of import or export, means of transport, etc.;

⑥ Customs recordal number of the trademark right when involving a trademark recorded at the Customs.

Where the Customs, after investigation, determines that the suspected infringing goods under detention have infringed upon the trademark right, it shall confiscate the goods and proceed the case accordingly.

(2) Customs recordal of trademark rights

A trademark registrant may record his trademark rights related information with the General Administration of Customs of the People’s Republic of China (GACC) in accordance with the Regulations of Customs Protection of Intellectual Property Rights, so that the Customs can conduct ex officio actions to protect the trademark rights in the process of surveilling imported and exported goods. Only a goods mark can be recorded. When applying for the recordal, the registrant shall present a written application. The application shall include the following particulars:

①? The name, registration place or nationality, etc. of the right holder;

② Trademark name, registration number, designated class, designated goods and other relevant information related to the trademark right;

③ The status quo relating to licensing of trademark right, if any;

④ The name, origin, Customs at the port of import or export, importer or exporter, main features and prices, etc. of the goods on which the trademark is lawfully used;

⑤ The manufacturers, importers and exporters, Customs at the port of import or export, main features and prices, etc. of the known infringing goods, if any.

The advantages of Customs recordal are:

① Customs recordal is a prerequisite for the Customs to take proactive protection measures;

② Customs recordal is helpful for the Customs to spot infringing goods;

③ Customs recordal is helpful to reduce the guarantee burden of the right holder;

④ Customs recordal can have a deterrent effect on the infringer.

A trademark registrant may file an application for Customs recordal with GACC. GACC shall, within 30 working days from the date of receipt of all the application documents, make a decision on whether or not to allow the recordal and notify the trademark registrant in writing. The Customs recordal shall be valid from the date on which GACC allows the recordal, and the term of validity of the recordal shall be 10 years. Where the term of validity of the recorded trademark right is less than 10 years as from the effective date of recordal, the term of validity of the recordal shall be subject to the term of validity of the trademark right. Within 6 months before the expiration of the term of validity, the trademark registrant may file a renewal application of recordal with GACC.