As enterprises become more aware of the benefits of filing for customs recordal of intellectual property (IP), an increasing number of rights holders are choosing to register the legal status of their IP, details of their goods, and the lawful use of their IP with the General Administration of Customs. This allows customs authorities to proactively protect relevant IP during the supervision of import and export goods.
However, at the initial filing stage, some companies choose to have their exclusive licensees file the Customs recordal on their behalf or attempt to file for trademarks that are still under application. However, these practices do not comply with the relevant provisions of the "Regulations on Customs Protection of Intellectual Property Rights." To help rights holders successfully file with customs, the author has compiled some basic knowledge during the initial filing process for reference.
Eligible Intellectual Property for Filing
According to Article 2 of the "Regulations on Customs Protection of Intellectual Property Rights," the IP protected by Chinese customs should be related to import and export goods and protected under Chinese laws and administrative regulations, including trademark rights, copyrights, and patent rights. Therefore, the following types of IP can be filed for customs protection:
1. Trademarks registered and approved by the National Intellectual Property Administration (excluding service marks);
2. International trademarks registered with the World Intellectual Property Organization and extended to China (excluding service marks);
3. Invention, design, and utility model patents granted by the National Intellectual Property Administration (formerly the China Patent Office);
4. Copyrights and related rights owned by citizens or organizations of member countries of the Berne Convention for the Protection of Literary and Artistic Works.
Applicants for Customs Filing
Only the rights holder of the intellectual property can apply for customs filing.
Licensees using the IP cannot apply for customs filing in their own name. However, they can be entrusted by the trademark registrant, patent holder, copyright owner, or related rights holder to apply as an agent on behalf of the rights holder.
Rights holders outside mainland China must entrust a natural person, legal entity, or other organization within China (such as a representative office established by the foreign rights holder in China) to apply with the General Administration of Customs.
Correction, Cancellation, and Revocation of Filing
1. Correction of Filing
If errors are found in the data or information of a filed IP, the rights holder can submit a "Request for Correction of Data Errors in Customs Protection of Intellectual Property Rights Filing" to the General Administration of Customs to correct the errors.
2. Cancellation of Filing
If the rights holder transfers the IP or requests that customs no longer protect their IP, they can apply for cancellation of the customs filing. The applicant should log into the protection system to apply for cancellation, upload a cancellation request, and provide the reason for cancellation.
3. Revocation of Filing
According to regulations, if there are changes in the IP filing status, the rights holder must apply for modification or cancellation of the filing with the General Administration of Customs within 30 working days from the date of the change. If the rights holder fails to comply with this requirement and it seriously affects the lawful import/export activities of others or the customs' ability to perform their supervisory duties, the General Administration of Customs may revoke the filing based on applications from interested parties or on its own initiative.
Although the process of filing for customs recordal of intellectual property is not difficult, it can pose challenges for companies that have not done it before. The author hopes that the basic knowledge compiled here will help enterprises successfully file for IP protection with customs.
