Dan Harris of China Law Blog attended a US Patent and Trademark Office's seminar about Protecting your IP in China, see here the first of a series. Dan's first favorite speaker was Kevin Brown, Nike's director of global band protection who talked about drinking green tea, or in other words when in China, do as the Chinese. Moreover, Brown talked about the virtues of working with Chinese customs and Nike's successes by doing so:
"If you register your trademark in China, alert Chinese customs to that registration and provide customs with information on your product, Chinese customs will contact you if it sees possible counterfeits of your product going in or out of China. Mr. Brown then mentioned that in Canada neither the importation nor the exportation of counterfeit product is illegal; only the sale of such products is."
I just read a great article from Yu Xiang, The New Regulations Regarding Customs Protection of Intellectual Property Rights of the People's Republic of China, IIC Volume 36, 7/2005. The importance of registration, or in other words recordation, can not be underestimated for ex officio action (because of one's office, so on one's own initiative).
Pursuant to article 16 Customs Regulations 2003, customs shall notify the right owner immediately, when they discover the goods suspected to infringe recorded intellectual property rights. Rephrased: customs recordation is required for customs’ ex officio action. Yu argues that because the recordation as a prerequisite for proceedings upon a right owner’s application was abolished and so was the provision that allowed customs to detain goods at their own initiative, “it is not really useful to maintain the recordation prerequisite for mere acts of inspection and informing right owners about possible infringements”. However, it makes sense in some cases that the intellectual property rights are recorded, so customs is getting more information about the goods. In fact recordation is often not enough to help customs distinguish between fakes and genuine products. In such circumstances it can be an option to give trainings to customs officials.
Yu writes that article 58 TRIPS prescribes that members which introduce standards for ex officio customs action, must adhere to the standards of article 58 a-c TRIPS.
Article 58 TRIPS states: “Where Members require competent authorities to act upon their own initiative and to suspend the release of goods in respect of which they have acquired prima facie evidence that an intellectual property right is being infringed: (a) the competent authorities may at any time seek from the right holder any information that may assist them to exercise these powers“.
However, one could interpret ‘any information’ as recordation of the intellectual property right and ‘at any time’, the point in time before an alleged infringement. So in my opinion article 16 Customs Regulations 2003 does not contravene article 58 TRIPS.