How to protect a trademark from infringement in China? – Counterfeits
All counterfeits are infringements but that does not mean all infringements are counterfeits. There are general principles of interpretation with a view to deterring counterfeit activity. The Trademark Counterfeiting Act of 1984 for example, adopts the original Lanham Act definition of counterfeit that:
A “counterfeit” is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.[1]
Such “counterfeit” mark must be used on the same services or goods which are covered by IP right owner’s registration. Nevertheless, it is not necessary for the infringers to know IP right owner’s mark is being registered.[2] Intellectual property right owner frequently employ private investigators to detect alleged counterfeit goods. Defendant cannot bring up an excuse of willful blindness against the penalties of the counterfeit statute.[3]
The general rule attributed by the Supreme Court in the Ives case[4] indicates that:
“[L]iability for trademark infringement can extend beyond those who actually mislabel goods with the mark of another. Even if a manufacturer does not directly control others in the chain of distribution, it can be held responsible for their infringing activities under certain circumstances. Thus, if a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply to its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorily responsible for any harm done as a result of the deceit.”[5]
China for example, the purpose of recording IP rights at custom in China is to stop exporting and importing infringement product. The General Administration of Customs (GAC) is an administrative agency within the government of the People’s Republic of China. The China’s custom has the authority to protect IP rights by confiscating infringing goods and imposing fines on infringers. For circumstances that the infringement of IP rights exceeds a certain threshold, the custom authorities may impose criminal proceedings against the infringing party.
In China, IP rights can be recorded with GAC in Beijing. Although it is not compulsory to record IP rights with GAC in order to apply criminal proceedings against the infringing party, however it would be considered as extra protection. If your IP rights are registered with custom, the customer would have the power to detain any suspected infringing consignment of goods and be more pro-active to detain counterfeit goods as the recordal provides custom officials with easy access to internal IP databases to determine whether goods passing through customs are genuine or counterfeit.
Once you registered your IP with GAC, your rights can be enforced through two channels:
1. If you know an infringing shipment is going to pass through one of the Chinese ports, you can notify custom officials to seize the goods.
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