A luxury brand guide to Asia Pacific customs powers in trademark enforcement

DLA Piper partner Edward Chatterton and colleagues provide a high-level overview of how APAC customs authorities can help brand owners stop counterfeit goods entering a country

Customs and border protection are a key tool to stop infringing goods from entering new markets

In IP enforcement and anti-counterfeiting efforts, one of the most powerful tools in a luxury brand owner’s arsenal is harnessing the powers of customs and border protection authorities to stop infringing goods from crossing borders and entering new markets. This is available in various jurisdictions in Asia Pacific, though the procedures vary.

  • Australia: the Australian Border Force has the power to seize goods infringing intellectual property rights (IPRs), including trademarks. A notice of objection can be lodged, and any goods bearing a mark substantially identical or deceptively similar to a trademark in respect of which a notice has been lodged will be seized.
  • Bangladesh: if they have reason to believe that a trademark on imported goods is false, the commissioner of customs may require the importer or their agent to provide further information, failing which fines may apply.
  • Cambodia: a registered trademark owner can request that customs authorities prevent the import clearance of infringing goods.
  • China: IPR recordal with the General Administration of Customs is available. If suspected infringing goods are detected, customs will detain the goods and confirm with the IPR owner whether they would like to pursue further action.
  • Hong Kong, China: IPRs cannot be recorded with the customs department. However, if infringement is detected by a registered trademark owner, it can be reported to the department, following which they will investigate.
  • Indonesia: if there is evidence of infringement, customs can detain goods in their own capacity or in response to an order from the head of the commercial court. Trademark recordal is available for certain entities domiciled in Indonesia, allowing customs to notify the owner regarding suspected infringing goods and permit the owner to pursue further action, including suspension of the goods.
  • Japan: customs officials work to intercept imports of products which infringe IPRs, including trademarks. A trademark owner can apply to customs to have certain imports suspended. To avoid the accidental prohibition of parallel imports of genuine products, the owner must provide information to help customs distinguish genuine goods from counterfeits and to identify authorised factories and licensees.
  • Macau, China: as a precautionary measure, customs may seize suspected infringing goods at the point of export or import. Seizure may be exercised upon request, either on the spot or in advance, by anyone demonstrating a legitimate interest. It is also possible for a registered trademark owner to submit a request for a customs watch.
  • Myanmar: trademark owners can apply to customs to stop the import, export or transit of infringing goods by filing a customs notice. Suspension or detention orders made by customs is possible.
  • New Zealand: an IPR notice may be filed with customs. In the event that customs intercepts suspected counterfeit goods for which a notice has been filed, it will investigate whether the goods infringe the notice issuer’s rights. If goods are found to infringe, they are detained.
  • Pakistan: customs can detain infringing goods intended for import or export on their own initiative or in response to an application filed by a trademark owner.
  • Philippines: registered trademark owners may record their marks with the Intellectual Property Unit of the Bureau of Customs. Any shipment found to contain counterfeit goods will be forfeited to the government and disposed of.
  • Singapore: IPR owners can lodge a complaint asking customs to detain suspected infringing goods to be exported from or imported into Singapore. Customs can also detain suspected infringing goods on their own initiative. In some circumstances, customs can provide IPR owners with information regarding the detained goods, including names and contact details, to allow further enforcement action.
  • Sri Lanka: an IPR owner who has valid grounds to believe that the import of counterfeit goods contravenes their rights may apply in writing to the director general of customs, requesting them to suspend the release of such goods.
  • Taiwan, China: a trademark owner can apply and file documentation with the customs authorities to request that they monitor infringing use of their marks. Such documentation must include details of any authorised local agents, distributors and outlets.
  • Vietnam: recordal of trademarks can be filed with Department of Customs Control and Supervision under the General Department of Customs. If the recordal is accepted, customs will monitor for infringing goods on a nationwide basis. If suspected infringing goods are detected, customs will temporarily suspend the clearance of the goods and notify the trademark owner, allowing them to take further action.

For a detailed overview of customs powers in trademark enforcement (including information required and enforcement procedures), register for DLA Piper’s Global Trademark Guide. The guide allows side-by-side cross-jurisdictional comparison of key points of trademark law and practice for more than 50 jurisdictions around the globe, covering trademark filing, prosecution and portfolio management, as well as licences and assignments, enforcement, litigation, domain names, company names and rights in unregistered marks. 

Edward Chatterton (global co-chair trademark, copyright and media) and Elizabeth Wong are partners at DLA Piper Hong Kong. Jessie Buchan is a partner at DLA Piper Australia (global co-chair consumer goods sub-sector), and Liam Blackford is a knowledge development lawyer based in Sydney. They can be reached at [email protected], [email protected], [email protected] and [email protected].

DLA Piper’s intellectual property practice advises on all aspects of intellectual property law, including trademarks, copyright, patents, advertising, brand protection, trade secrets, database rights and designs.

Email your news and story ideas to: [email protected]