How to lodge customs notice for IP infringement in Hong Kong
The Hong Kong Customs adopts enforcement strategy against the supply as well as the retail of counterfeit goods. On the supply side, they focus their enforcement efforts against illegal activities at the import and export, manufacturing, wholesale and distribution levels. At the retail level, they take repeated and sustained enforcement actions to eradicate street level piracy and counterfeiting activities.
Unlike in China, Hong Kong Customs does not adopt a recordal system for trademark protection at the border. Instead, they do their own daily surveillance against trademark counterfeiting based on the records of valid registered trademark in Hong Kong. Once they find suspicious counterfeit goods, they will detain the goods and at the same time notify the trademark agent representing the owner of the registered trademark of their findings. The following documents and article are required before the Hong Kong Customs take further action.
Documents and articles required:-
(1) A copy of the relevant Trademark Registration Certificate;
(2) Sample of the genuine product and the offending goods;
(3) In case a lawyer in Hong Kong is instructed to file the report on behalf of the trademark owner, written authorization for the lawyer to complete the report and assist in criminal prosecution or other legal action on the trademark owner’s behalf; and
(4) Appointment letter in regard to a competent examiner by the trademark owner to conduct subsequent seizure identification and undertake to give evidence and testify in court.
The registered trademark owners are also welcome to report trademark counterfeiting activities in Hong Kong to the Hong Kong Customs, such as any particular shipment or transportation of counterfeit goods to be imported into Hong Kong or particular premises in Hong Kong in which counterfeit goods are stored. Upon receipt of the report, the Hong Kong Customs will do their own investigation and take action accordingly. Hong Kong Customs require the same documents before they take on the case reported by the owner of the registered trademark.
It is therefore advisable to have the documents (3) and (4) above prepared in advance so that quick Customs action can be taken whenever counterfeiting activities are found in Hong Kong (such as at the trade fairs in Hong Kong).