Hogan Lovells

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The site will give you an overview of Intellectual Property law and related procedures, and how these may differ from country to country.

Trademarks - Anti-counterfeiting: Customs watch applications - Hong Kong

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-Are there any fees or local procedural requirements?

There are no fees or other procedural requirements. There is no requirement for bond or security.

-How do you register a customs watch application?

Before Hong Kong Customs will take action at the request of a trademark owner, the trademark owner has to record their marks with the Hong Kong Customs and Excise Department.  This would customarily require the trademark owner to:

  • Demonstrate that there is an infringement problem.  Examples of how this may be done include:
  • Providing a sample infringing product purchased from a shop within Hong Kong together with relevant receipts, and/or
  • Providing a notice from overseas customs authorities showing that infringing products originating from (or shipped via) Hong Kong have been seized in their jurisdiction.
  • Make available an "examiner" (or "expert") who can examine goods seized by customs and verify whether such goods are infringing.  The examiner should ideally be an employee of the trademark owner but does not have to be. The examiner should have sufficient experience and training from the trademark owner to verify goods seized by customs.  If no local employee is available, some trademark owners instruct agents (e.g. investigators) to perform this role. Customs will usually request an "interview" with the examiner to determine whether he/she has sufficient knowledge required to distinguish between genuine and infringing goods and give evidence on such matters in the event a case proceeds to trial.

-How long does it take and what is the term of protection?

If the required documents are in order, the application procedure can be completed within 2 to 3 weeks (subject to availability of the examiner and customs). No renewal is required.

-If filing on behalf of a subsidiary of the IP rights holder what evidence of connection to the parent company is required?

Customs watch applications can be filed by or on behalf of the rights holder, provided the applicant has valid authorisation to do so.

-Is a local agent required? If so, is a power of attorney required?

The local agent should act as the examiner of the seized goods.  In order to act as the local agent, he/she should obtain a power of attorney from the trademark owner.

-What documentation is required or recommended?

The application should contain:

  • A letter from the trademark owner appointing at least one named examiner to act on its behalf
  • Copies of relevant trademark certificates.

The rights holder should provide the following information to customs when reporting a trademark counterfeiting activity:

  • Relevant Trademark Certificate as proof of the trademark having been registered in HKSAR A sample of the genuine product and the offending goods.
  • A sample of the genuine product and the offending goods
  • In case the recordal is filed by a party other than the rights owner, written authorisation for the party to complete the recordal and assist in criminal prosecution or other legal action on the rights owner's behalf is required
  • Appointment letter in regard to a competent examiner by the rights holder to conduct subsequent seizure identification and undertake to give evidence and testify in court.

-What level of understanding of IP rights is available from customs? Are additional procedures or training required?

Additional training may be provided to the customs officers, but it is not required.  Depending on the complexity of the goods involved, it may be useful to provide a written guideline on any distinguishing features commonly found in infringing products.

-When customs report on a finding how long does the rights holder have to respond and what steps are required to ensure non-release of counterfeit goods?

This will depend on the circumstances in which the goods are seized.  In some cases, for example where suspected infringing goods are found in a vehicle crossing the border into Hong Kong, the rights holder is required to respond immediately.  This is why customs require the appointed examiner to be in Hong Kong.  In other cases, customs usually allow up to 14 days to respond.

Seized goods will not be released if the rights holder provides confirmation that the goods are counterfeits and they are willing to support prosecution in respect of those goods.