Protecting luxury brands’ IP in Macau

Low registration fees and an active customs office are among the reasons IP protection is a simple strategy in Macau, writes local lawyer Bruno Nunes

At first glance, luxury brands might be wary of IP protection in Macau, a booming luxury destination and special administrative region of the People’s Republic of China in the western Pearl River Delta by the South China Sea.  

Why? Brands may wrongly assume that their IP registrations in mainland China extend to Macau. This is not the case; brands require separate protection in Macau to ensure their valuable assets are protected here also.

Also, there are few manufacturing industries operating in Macau, meaning the focus of the international community’s watchdogs is on Vietnam, Thailand, Cambodia, China and even Hong Kong. In addition, Macau is at walking distance from the “factory of the world” – located in the Guangdong province and where many counterfeits originate from.

But in truth, IP registration charges in Macau are among the lowest in the world and the region’s robust anti-counterfeiting measures eliminate IP threats and protect brands from infringement. For example, Macau’s Customs Service plays a critical role in intercepting counterfeit goods at ports of entry and actively collaborates with luxury brand representatives to identify and seize counterfeit products.

While there is no formal registration process with Customs in Macau, it is customary for well-known brands to submit a notice to the Customs Bureau with the following information:

  • Intellectual property rights they have registered in Macau and their scope;
  • The products being sold within Macau;
  • Details regarding the locations or methods of sale (namely online);
  • Which company ships the items to Macau; and  
  • Relevant contacts, namely local counsel, in case they detect imports that do not align with the information being provided.  

Additionally, Customs appreciates when brand owners personally visit them to provide live explanations on how to distinguish between genuine and counterfeit products, as well as parallel imports.

It is also advisable to indicate a relevant expert that can assist Customs and the Intellectual Property Office in case of any infringement and provide expert testimony on whether a product made available for sale is or isn’t an original product.

Article 291, f) of the Industrial Property Legal Regime determines that those who, without consent, use a third-party registered trademark in their products, services, establishment or company, can face imprisonment of up to three years or a daily fine that is imposed for 90 to 180 days (the judge awards a daily amount and then determines the number of days as punishment).

The primary steps involved in detainment and seizure proceedings are:

  • Detainment: the Customs Bureau typically inspects inbound cargo and if they have reasonable doubts, based on their knowledge of the goods or the previously mentioned notice, they may contact the designated person to verify the legitimacy of the cargo.
  • Seizure: seizure proceedings begin when a complaint is filed with the Macau Customs Bureau and provides the following information – details of the plaintiff, including name and address; Macau contact details, which can be your local attorney; and details of the infringer, including name, address and shop (if available).

The Macau Customs Department will visit the location, close the shop, seize the assets and prepare a report to be submitted to the Public Prosecution Office, along with a criminal complaint notification to the brand owner.

Through a local attorney, the brand owner has 10 days to file a declaration with the Public Prosecution Office expressing the intention to become an “assistant to the prosecutor”. This status grants the brand owner (and their local attorney) notification of all proceedings, the ability to file appeals in case of dismissal, request additional charges against the infringer and claim compensation for losses and damages. All proven costs can be recovered if a favourable judgment is obtained, and the brand owner can rely on the evidence collected by Customs.

If a complaint has been filed with Customs and the goods are detained during customs inspection, a separate complaint is not necessary. The brand owner will simply be notified by the Public Prosecutor, giving them the opportunity to become an “assistant to the prosecutor”. (In this context, “filing” refers to the registration letter and any individual filing made to Customs if counterfeit goods are identified that were not detected by Customs themselves).

Additionally, luxury brands can take legal action against counterfeiters by filing civil lawsuits, conducting investigations and collaborating with local authorities.  

Strengthening brand protection measures, including the implementation of secure packaging, serial numbers and authentication technologies, can further deter counterfeiting and protect consumers.

Brand dilution and protecting brand reputation

Macau recognises the importance of protecting brand reputation and preventing brand dilution, which is the unauthorised use of a luxury brand’s identity or reputation, which can harm its distinctiveness and exclusivity.  

Luxury brands can employ legal strategies such as trademark infringement actions, false advertising claims and unfair competition claims to protect their brand reputation. Macau’s legal system provides remedies to address unauthorised use of brand names, logos and other distinctive elements that could lead to brand dilution.

In addition, proactive brand management and monitoring strategies are essential to detect potential instances of brand dilution and reputation damage. Luxury brands can engage brand protection agencies, employ online monitoring tools and collaborate with local authorities to identify and address instances of brand dilution or unauthorised use promptly.

If you would like to know more about legal aspects that impact luxury brands, please download our guide here or email us at [email protected]

Bruno Nunes is the founder of the Macau and Portuguese business law firm BN Lawyers and practises in the areas of corporate law, intellectual property, gaming law and arbitration. He is a registered lawyer in the Macau Lawyers Association, the Portuguese Bar Association and the Department of Justice of the Guangdong Government (China). To learn more about the legal aspects of doing business in Macau or to receive the BN Macau Luxury Guide, contact Bruno at [email protected].   

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