Top 10 Cases of China Customs IPR Enforcement in 2006
06/29/2011
I. The case of Huangpu Customs seizing the export infringing used mobile phones of XX logistics company in Guangzhou Free Trade Zone, Guangdong
(I) Basic information of the case
On March 13, 2006, Huangpu Customs received a tip-off from Philips (China) Investment Co., Ltd., claiming that they found a company based in Guangzhou was suspected of exporting infringing used mobile phones. After risk analysis, Huangpu Customs believed that the tip-off information had an important value, and then made deployment to take relevant measures to track down a batch of “MOTOROLA” used mobile phones and “PHILIPS” used mobile phones of XX logistics company (hereinafter referred to as the “Logistics Company”) in Guangzhou Free Trade Zone, Guangdong. These goods were declared for export in the name of transit from Free Trade Zone warehouses, and the Logistics Company was suspected of infringing the exclusive rights to use trademarks of Koninklijke Philips Electronics N.V. and Motorola Inc.
According to the preliminary evaluation of the right holders, the shells of the mobile phones aforesaid were identified as bogus goods. Though the mobile phone mainboards were from certified used mobile phones, the original unique identification codes had been reset and new bar codes had been attached. On these grounds, the right holders believed that these mobile phones had constituted infringement behavior, thus they requested Huangpu Customs to detain these goods. In consideration that the large quantity and high value of the involved goods might violate relevant provisions of the Criminal Law, Huangpu Customs immediately reported the case to relevant public security department and administration department of industry and commerce, and cooperated with these departments to ferret out the production plant and control relevant personnel of the Logistics Company. Due to the prompt and decisive actions, Huangpu Customs seized 17893 sets of assembled bogus “MOTOROLA” and “PHILIPS” used mobile phones on the spot (with a value of about RMB 730,000), a great number of waste second-hand mobile phones of different brands, spares & accessories and tools to be used for assembly of bogus phones at the port and the plant. Besides, four criminal suspects were put under control. On April 4, Huangpu Customs handed over the detained mobile phones to Luogang District Public Security Sub-bureau of Guangzhou and contacted relevant right holders to present authentication certificates. What’s more, based on the requirements of Luogang District Public Security Sub-bureau of Guangzhou, the Customs also provided relevant declaration forms of the Logistics Company for transmit in and out of Guangzhou Free Trade Zone, Guangdong during the period from December 2004 to the date of the crime. Following the clues offered by Huangpu Customs, the Public Security Sub-bureau accepted the case for investigation, and later, detained and arrested four criminal suspects, namely, Zhang XX (male, 51-year-old, born in Hong Kong), Xu XX (male, 26-year-old, born in Huidong, Guangdong), Li XX (male, 26-year-old, born in Lianyungang, Jiangsu) and Li XX (male, 30-year-old, born in Meizhou City, Guangdong).
On October 20, 2006, Guangzhou Luogang District People’s Court formally opened a court hearing on infringement of export used mobile phones of the Logistics Company. The procuratorial organ initiated a public prosecution against the four suspects of the crime of counterfeiting registered trademarks. During the hearing, both the prosecuting side and the defense had no objection about the case facts. This case was formally pronounced on December 14, 2006. Defendants Zhang XX and Xu XX were sentenced to a 9-month imprisonment and a fine of RMB 5,000 respectively for the crime of counterfeiting registered trademarks, while defendants Li XX and Li XX were sentenced to a 8-month imprisonment and a fine of RMB 3,000 respectively for the crime of counterfeiting registered trademarks.
(II) Recommendation reasons
1. The Customs and public security organs worked together to ferret out infringing goods and arrest criminal suspects, putting criminals under criminal sanctions;
2. New infringement method (refitting the mainboards of certified used mobile phones with counterfeit phone shells) was discovered;
3. The infringing goods seized were in large quantity and of high value.
II. The case of Xiamen Customs seizing over 30,000 sets of counterfeit “Li-Ning” sweat suits
(I) Basic information of the case
On February 10, 2006, XX import & export company based in Xiamen commissioned XX forwarder based in Xiamen to make customs declaration of a batch of men’s sweat suits in the name of general trade with the destination country as Untied Arab Emirates (UAE). Upon receiving the declaration forms, customs officers conducted an analysis of the batch of goods and concluded that: Firstly, the goods’ destination country – UAE was one of the frequently involved destinations for infringing goods at Xiamen Customs District, and UAE was the destination in many previously identified infringement cases; secondly, both the operating unit and the forwarding unit were trading companies, most of such companies had no self-owned brand and production capacity and usually exported in the ways like domestic purchase or customs clearance agency, thus tended to have some untruthful brand declaration; thirdly, the declared number of packages were 390 boxes (31752 sets of sweat suits), so there should be 80 sets in each box, but this could be possible unless compression packing was adopted, and clothes packaged in such manner usually was with poor quality and thus with high potential to illegally use others’ brands; fourthly, the goods packing list showed the clothes with different styles employed various packing specifications, thus with the risk of exporting suspected infringing goods mixed up with general goods; fifthly, documents provided by the company were carelessly prepared with illogical situation, such as the non-standard and illogical fill-in of letter of authorization for customs clearance, invoices, sales contract, which obviously indicated the behavior of export through purchase of verification sheets. In view of the reasons listed above, the form-reviewing officers immediately decided to unpack the goods for examination.
On February 11, inspection officers opened those containers listed on the Customs Declaration Form for examination. According to the inspection, the quantity and name of the goods were in conformance with the declaration, but those goods were products with three appointed trademarks, specifically, “L” pattern with “LINING” word, “NBA” pattern and “Adidas” with “three-slash” pattern, which were all embroidered on the notable positions of tops and trousers. Those clothes were delicately produced with all necessary labels and bar codes, and seemed to be authentic ones; however, the packing bags used for compression packing were in different colors. It was learned from online verification, “L” pattern, “NBA” pattern and “Adidas” with “three-slash” pattern were respectively the trademarks under customs protection of Li Ning Sports Goods (Shanghai) Co., Ltd., U.S. NBA Properties, Inc. and Adidas-Salomon AG.
Inspection officers preliminarily judged that the goods were trademark-infringing products based on the use of compression packing and mixed stowage of clothes of different brands. When contacting with the owner of the goods, customs declarer was informed that these goods were authentic products. The Customs immediately required the company to provide relevant certificates of authorization and decided to suspend customs clearance formalities for these goods. After repeated urging of the Customs, the company provided a Warehouse Delivery Order issued by XX sports goods company to demonstrate that these goods were authorized ones. Customs officers discovered many doubtful points in this Warehouse Delivery Order after analysis, thus decided to activate the active protection procedure – contacting with relevant right holders.
On February 23, Li Ning Company sent specially-designated personnel to identify the sample of these goods, and it was confirmed that these goods were counterfeit products infringing the trademark of “Li-Ning”. Accordingly. Li Ning applied for customs protection. Later, NBA Properties, Inc. and Adidas-Salomon AG separately submitted application for protection to the Customs.
After investigation, Xiamen Customs validated these goods were products infringing others’ exclusive right to use the trademarks, and the behavior of exporting these goods had constituted the behavior of infringing others’ exclusive right to use the trademarks. Thus, the Customs made an administrative penalty of confiscating 31743 sets of trademark-infringing sweat suits and a penalty of RMB 77,000. After the issue was settled, the representative of "LiNing” trademark holder paid a special visit to Xiamen Customs to express their gratitude, and delightedly used “two never expected” to show the appreciation and recognition. “LINING trademark was registered with the General Administration of Customs just at the end of last year, and we never expected that Xiamen Customs can seize trademark infringing clothes during the export declaration process in such a short time. What we also never expected is that the trademark infringing clothes seized is in such a large number and high value. This infringement case cracked by Xiamen Customs makes us very confident in customs protection of intellectual property rights.”
(II) Recommendation reasons
1. Form-reviewing customs officers were very skilled in risk analysis and decided to open containers for goods examination based on the destination country of goods exported, the type of operating unit, the way of goods packing and shipping and the quality of documents prepared;
2. The trademark right had just been registered with the General Administration of Customs for only three months, and then the Customs seized the infringing goods, which fully displayed the role of filing for customs protection of intellectual property rights;
3. The infringing goods seized were in large quantity and with high value.
III. The case of Shenzhen Customs seizing about 50,000 cartons of counterfeit “MARLBORO” cigarettes
In the second half of 2006, according to information feedback from foreign customs and relevant right holders and in a view of counterfeit cigarettes frequently emerging at Shenzhen port, Shenzhen Customs made key monitoring on doubtful companies and actively carried out risk analysis of relevant information.
On August 19, 2006, Qingdao Sanxingyuan Import & Export Co., Ltd. made export declaration of 15180 PVC non-branded handbags with destination port as Hong Kong to Dapeng Customs (subordinate to Shenzhen Customs). Dapeng Customs believed the goods declared were very likely to have infringement risk based on risk analysis:
Firstly, the declaring company intentionally chose a farther customs to make export declaration which resulted in its operating cost being abnormally high. The investigation showed that the operating unit was a company based in Qingdao, from the perspective of cost control, non-local companies seldom went such a long distance to make export goods declaration. Especially because Qingdao port had very favorable conditions and various ocean shipping lines available, there was no need for local companies to transport these goods all way to Shenzhen for export. In views of the reasons above, the Customs believed these goods were very likely to involve “purchase of verification sheets”;
Secondly, the export goods deliberately selected a merchandise name with a low probability of customs inspection. The declared goods name of these goods was “non-branded PVC handbags”. According to the verification of counterfeit cigarettes case information provided by foreign customs, quite a lot of counterfeit cigarettes export cases were declared as common commodities without concerns of license management like PVC handbags. Thus it was concluded that the declared name of these goods might be false and the actual export goods were likely to be counterfeit cigarettes;
Thirdly, the destination was inconsistent with commercial transportation practices. The declared destination of these goods was Hong Kong, and generally, land transport clearance would be chosen instead of sea transport as the former was more convenient and economical for these goods that had traveled a long distance from Qingdao to Shenzhen which was close to Hong Kong. Besides, Yantian Port was an international container terminal, where shipping lines operated were mostly ocean shipping lines undertaken by international large-scale liner ships, so these goods with destination as Hong Kong choosing Yantian Port was inconsistent with general shipping practices. After further verification, the Customs found that the actual destination port of these goods was not Hong Kong but Greece which always was the risky destination of export counterfeit cigarettes.
Fourthly, the customs broker involved had adverse records at the Customs. According to the retrieval result of customs broker blacklist, the Customs found that the customs broker of these goods was Huizhou Weiqiu International Freight Forwarding Agency Co., Ltd. that acted as the agency of export infringing goods like counterfeit cigarettes for other companies.
Due to the reasons above, the Customs highly suspected these goods were infringing goods, and decisively made an order of deployment and control to require field inspection department to carefully check and verify the description, quantity and brand of these goods. At the night of August 20, field inspection officers examined the goods based on the order given. After the container was opened, several boxes of tissue paper were piled orderly at the entry of the container, entirely sheltering the goods inside. However, the inspection officers were not misled by the outward appearances, instead, they made analysis based on common sense that there's no need to falsely declare goods name and destination port if the actual export goods was tissue paper. It’s likely that such paper was disguising any infringing goods; therefore, the officers unloaded all goods inside and opened all the boxes for examination. As expected, the full container loads (except for 80 boxes of tissue paper at the entry of the container) were cigarettes with “MARLBORO” trademark. After an overall count, there were 47600 cartons. The case became clear then: the goods name, destination declared and tissue paper piled orderly at the surface layer in the container were all the disguises, while the real intention of the party involved was to export counterfeit cigarettes. The right holder identified these cigarettes as counterfeit goods which had a market value totaling over RMB 5 million if calculated according to the value of certified cigarettes.
According to the application of the right holder, Sazhen Customs immediately detained these goods aforesaid, and made the decision on administrative penalty on November 23, 2011 after investigation and trial. Meanwhile, according to the provisions as specified in the Measures of the Ministry of Public Security and the General Administration of Customs on Strengthening Cooperative Enforcement of Intellectual Property Right, the Customs notified Economic Crime Investigation Department of Shenzhen Municipal Public Security Bureau about relevant clues of the case, and it was under further investigation.
Recommendation reasons:
1. The consignor involved in this case tried various ways to escape from customs supervision, including falsely declaring goods name, destination port and using normal goods to disguise infringing goods; the means were highly concealing and strongly deceptive;
2. The professional sensitivity of field inspection officers and the skillful risk analysis capability of form-reviewing officers of the Customs were the key contributions to successfully discover these “MARLBORO” trademark-infringing counterfeit cigarettes, which to some extent reflected that the Customs had sound mass basis of IPR enforcement;
3. The Customs’ blacklist had provided decision support to this counterfeit cigarettes case, which demonstrated that the Customs made a sound basic work. Other customs should learn and follow the example;
4. Fighting against counterfeit cigarettes export was one of the important works of the General Administration of Customs in 2006. The Customs’ solving this counterfeit cigarette case had a strong deterrent effect to lawbreakers and effectively contained the severe situation of counterfeit cigarettes export.
IV. The Case of Beijing Customs seizing counterfeit “Pfizer” drugs during passenger inspection
(I) Basic information of the case
On December 11, 2005, an officer of Passenger Inspection Office in Beijing Capital International Airport, based on outgoing customs clearance supervision, found a man with a black book bag was quite nervous, thus came up to inquiry the man. The officer learned that the man was Israel and would catch TK021 flight to Istanbul, Turkey. The information above showed the man would not directly go back to Israel, instead, he decided to detour to Turkey, which was obviously illogical. Field officers decided to make X-ray examination of his luggage, and the shape showed on the display of X-ray apparatus suggested that there were black granular substances in his luggage, rather than clothes that generally taken for outbound flight, thus the luggage was highly risky. Field officers then decided to open the luggage for key examination.
After examination, they found a great number of bulk tablets with logos of “Pfizer” and “c20”. There were about 25,000 tablets with “Pfizer” logo and about 20,000 tablets with “c20” logo after count. Passenger inspection officers believed it's obviously illogical that a passenger carried so many drugs out of the country and he was suspected of violating relevant law, thus they immediately detained these drugs and handed them over to Division of Laws of Beijing Customs. The Division of Laws immediately made query of the intellectual property registration information of trademarks on these two kinds of tablets aforesaid, and it found that trademarks of “Pfizer” and “c20” had been registered with the General Administration of Customs. Therefore, the party involved was suspected of infringing the exclusive right to use trademarks owned by Pfizer Investment Co., Ltd. and U.S.-based Eli Lilly and Company (Asia).
The Division of Laws then timely notified relevant right holders relevant information, and received replies from these right holders the confirmation of infringement. According to the introduction of the right holders, the market price of these two kinds of drugs involved was about RMB 100 per tablet, and the total value of these counterfeit tablets was nearly RMB 4 million. In January 2006, Beijing Customs made the decision of confiscating these infringing drugs aforesaid.
(II) Recommendation reasons
1. This case related to infringing goods seized at the channel of passenger inspection, fully reflecting the rich experiences of field passenger inspection officers who could discover the suspicion of infringement from limited clues;
2. The party involved was a foreign traveler in China, to which we should pay more attention;
3. The infringing counterfeit drugs seized were in large quantity and of high value.
V. The case of Changsha Customs seizing export counterfeit batteries with “DURATA” trademark
(I) Basic information of the case
On October 10, 2006, Beijing-based XX import & export company commissioned Hunan-based XX customs broker to make export declaration of batteries (D size) to Changsha Customs, with the destination as Djibouti, with a declared quantity of 316800 batteries (1100 boxes) and declared gross price of USD 27,878.40 (equivalent to RMB 221,000). The Field Service Division of Changsha Customs discovered the following doubtful points after conducting risk analysis of these goods: Firstly, batteries were risky export infringing commodities (especially those exported to Africa); secondly, the forwarding unit was Shaoyang-based XX battery company with a risky source of infringing goods in the customs district; thirdly, the place of dispatch was located in Shaoyang City, Hunan, but the export broker (operating unit) was a Beijing-based company, which reflected the abnormal agency relations and export route. Thus, the Field Service Division of Changsha Customs believed these export goods had a great risk of infringement and decided to open the boxes for examination. On October 11, the Inspection Office of Field Service Division of Changsha Customs made examination of export goods aforesaid at the site under customs supervision in new Xianing port. It was discovered that these batteries bore the trademark of “DURATA” both at outer package and battery body. After inquiring customs IPR enforcement registration application management system of the General Administration of Customs, it was confirmed that the “DURATA” trademark had applied for registration of customs IPR enforcement (registration No: T2001-02397), and its right holder was Sichuan Huajing Guomao Industrial Co., Ltd. (hereinafter referred to as “Sichuan Huajing Company”). On this ground, either the forwarding unit or operating unit of these batteries as showed on the export declaration form was not the right holder of “DURATA” trademark. The inspection officers believed that these export batteries was suspected of infringing the exclusive right to use “DURATA” trademark, and immediately decided not to discharge these goods, which were handed over to the Law Office for further treatment on October 12.
The Law Office contacted Sichuan Huajing Company, the right holder of “DURATA” trademark and sent a Notice of Confirming the Intellectual Property Status of Import or Export Goods. The Company confirmed upon receiving the notice that these batteries infringed the exclusive right to use “DURATA” trademark and requested the Customs to detain these suspected infringing goods. Changsha Customs detained these suspected infringing batteries and initiated an investigation on October 16, and this case’s investigation and trial ended on November 20. The Customs decided to impose an administrative penalty on the party involved (a Beijing-based import & export company) of confiscating these infringing batteries and a penalty of RMB 22,100. The party involved had no objection to the administrative penalty made by the Customs.
According to the introduction of Sichuan Huajing Company, “DURATA” trademark was a brand independently created by the Company and had been registered in more than 60 countries. The D-sized batteries of the brand had a over 80% of market share and good reputation in countries and regions like Middle East, Ethiopia and Sudan in Africa; therefore, the right holder attached great importance to brand protection. In recent years, there emerged counterfeit D-sized “DURATA” batteries in the markets of Middle East and Africa, and these counterfeit batteries were from domestic China with similar trademarks, exerting certain impact on the markets of certified batteries. The right holder took various measures domestically to conduct investigation but without success. This cased cracked by Changsha Customs not only heavily hit the counterfeit-making companies, but also provided important clues for Sichuan Huajing Company to trace the source of counterfeits and defend its own rights and interests.
(II) Recommendation reasons
1. This case reflected the field customs service officers’ strong awareness of IPR protection, and they were capable of conducting risk analysis based on the actual situation of export goods and accurately seizing the infringing goods;
2. The overseas market of the right holder had been severely harmed by counterfeit products. Under the circumstance that the right holder tried every possible means to trace domestic counterfeit source but without success, the Customs successfully seized counterfeit goods that infringed the holder’s right at the port, which provided important information for the right holder to take further actions.
VI. The case of Qingdao Customs seizing export counterfeit T/C dyed fabrics with “SHTEX” trademark
(I) Basic information of the case
On July 4, 2006, a Shandong-based XX textile company made declaration of a batch of export T/C dyed fabrics to Huangdao Customs (subordinate to Qingdao Customs) in the name of general trade. Upon receiving the declaration, customs officers conducted risk analysis of these goods. The declaration belonged to remote declaration as the operating unit was not located within the jurisdiction of Huangdao Customs District, which might have great risk; the shipping lines involved were mainly the highly risky shipping lines; the destination country was Benin where trade restrictions were relatively looser and awareness of IPR protection was relatively weaker. On these grounds, customs officers decided to make key inspection on these goods. After examination, it found that there were T/C dyed fabrics bearing “SHTEX and its pattern” among the actual goods, with a total length of 203435.712 meters and a value of RMB 626,750.75. When inquiring the customs IPR enforcement registration system of the General Administration of Customs, it confirmed that the exclusive right to use “SHTEX and its pattern” trademark was owned by Orient International Holding Shanghai Textiles IMP&EXP Co., Ltd. and had been registered with the General Administration of Customs. The operating unit was unable to provide any legal certificate for licensed use of such trademark, thus its goods were suspected of infringement. Huangdao Customs immediately notified Orient International Holding Shanghai Textiles IMP&EXP Co., Ltd. the situation described above and detained these goods according to the law based on its request. After investigation, the party involved candidly confessed its infringement behaviors. Huangdao Customs immediately made the decision on administrative penalty of confiscating all infringing goods aforesaid, and notified Orient International Holding Shanghai Textiles IMP&EXP Co., Ltd. of the handling status in writing.
Orient International Holding Shanghai Textiles IMP&EXP Co., Ltd. expressed its gratitude for customs houses in Qingdao successively seizing export goods infringing its intellectual property right. The company introduced that T/C dyed fabrics with “SHTEX” trademark were its main products which had been exported to five continents and enjoyed immense popularity in the international market. But in recent years, due to the impact from counterfeit goods, its export volume to Africa, North America, Middle East and Southeast Asia dramatically dropped, and the annual amount of exports once plunged from USD 130 million to USD 30 million. Since the company registered its trademark right with the General Administration of Customs, customs houses in different regions had successively seized over 40 batches of export goods infringing its trademark right with the value involved exceeding RMB 20 million, effectively defending the international reputation of its products. By now, the export volume of the company had obviously picked up and the annual exports had recovered to its original level.
(II) Recommendation reasons
1. Domestic right holder took advantage of customs IPR enforcement to defend its product reputation and international market;
2. Customs officers were capable to target suspected infringing goods based on risk analysis;
3. The infringing goods seized were in large quantity and with high value.
VII. The case of Shanghai Customs successively seizing export bicycle tube infringing “DIAMOND and its pattern” trademark
(I) Basic information of the case
On March 20, 2006, an Anhui-based XX company made export declaration of a batch of goods including bicycle tubes, rear hub handles and chain wheel cranks to Shanghai Customs with a destination of Pakistan. When reviewing the declaration form, form-reviewing officers found the following doubtful points after careful risk analysis: Firstly, these goods declared 10 kinds of miscellaneous commodities and most of them were bicycle spare parts and accessories; secondly, bicycle spare parts and accessories, especially inner tubes, were always the risky infringing goods in many previously identified cases at Shanghai Customs; thirdly, the direction of export goods was risky. On these grounds, form-reviewing officers decided to make a deployment and control order of “checking the trademark of goods” on these goods.
On March 21, it was discovered after customs officers opened the container and examined the goods that, there were hundreds of boxes of bicycle spare parts and accessories like rear hub handles without trademarks piled at the entry of the container. Based on the experiences from previously identified infringement cases, inspection officers decided to open a channel to the middle or bottom of the container to make further random inspection. As expected, at the bottom of the container, there found 1000 boxes (totaled 100,000 pieces) of bicycle inner tubes bearing “diamond pattern” and “DIAMOND” word, with a value of RMB 266,400. After the examination, the right holder confirmed these goods as infringing goods.
During the process of investigation, the party involved argued that these goods were labeled another “SUPER” word on the goods packages, which made them different from the registered trademark of the right holder; meanwhile, the outer packing style of these goods was designated by foreign clients. After investigation, the Customs firmly believed, the “diamond pattern” and “DIAMOND” word on export goods of the party involved were very similar with the registered “DIAMOND and its pattern” of the right holder, thus the Customs made the decision on administrative penalty to the party involved according to relevant laws.
A month later, Shanghai Customs seized again over 50,000 suspected infringing bicycle inner tubes exported to Ecuador by a Yancheng-based company by the similar risk analysis method aforesaid, and the goods’ logos were exactly the same as those used in the case described above.
(II) Recommendation reasons
1. The operating unit adopted the means like mixed loading and concealed packing to escape from customs supervision, making customs inspection more difficult;
2. The Customs applied the risk analysis technique to seize counterfeit goods infringing the same trademark for successive two times;
3. The infringing goods seized were in large quantity.
VIII. The case of Hangzhou Customs seizing jerseys infringing “FIFA” trademark
(I) Basic information of the case
On August 19, 2006, a Jinhua-based XX travel agency made export declaration of 71650 synthetic fiber knitted men’s shirts, sweatshirts and T-shirts to Jinhua Customs (Subordinate to Hangzhou Customs). These clothes were loaded in a large container, and the destination port was Dubai port, UAE. Customs officers conducted risk analysis of these goods and concluded the following risky points: Firstly, the declaring unit of these goods was a travel agency, and generally speaking, there usually were different kinds of goods, seldom a container just containing clothes; secondly, there were numerous clothing enterprises within the customs district, exporting a container of clothes usually made declaration at the port. So, customs clearance department decided to examine these clothes.
On August 24, the agent of these goods went to inspection site to accept goods inspection. After opening the container, inspection officers found these goods were packed with woven bags in carton packaging, which made the officers sense that there might be infringement suspicion, thus the officers decided to make comprehensive examination. After field count, the actual goods included 417 boxes (72 suits per box) of football sweat suits and 94 boxes (120 pieces per box) of football T-shirts, totaling 41304 suits (pieces) on the site. All the football clothes bore the “FIFA” trademark. By inquiring the “customs IPR enforcement registration system” of the General Administration of Customs, the Customs confirmed the “FIFA” trademark was owned by the Fédération Internationale de Football Association which had applied for customs protection with the General Administration of Customs. So these goods were suspected of infringement.
On August 25, this case was handed over to the investigation department. In consideration that this was a major case, and many useful clues cannot be verified as these goods were declared many days ago, the personnel handling the case of Jinhua Customs had no choice but rushed to the inspection site again, and carried out investigation based on verifiable clues like the transport route of the freight driver and preparation of the customs declaration documents. According to preliminary investigation results, these football sweat suits were purchased by an Afghan merchant at Yiwu market, and this Afghan merchant had gone back to Afghanistan. Before he went back, he commissioned Ma XX in Guangzhou to handle the export formalities of these sweat suits, and Ma XX found a Zhejiang XX international freight forwarder company in Yiwu to handle relevant formalities. Then this Zhejiang XX international freight forwarder company transferred these export declaration issues to a Jinhua-based XX travel agency. The logistics of the goods had been figured out, and the remaining task was to notify relevant responsible persons to accept penalties. The personnel handling the case publicized relevant regulations on customs IPR enforcement to the Zhejiang XX international freight forwarder company and notified Fédération Internationale de Football Association about the goods particulars. On September 4, Fédération Internationale de Football Association formally requested for customs protection after field identification. On September 5, Jinhua Customs formally initiated investigation.
In order to smoothly handle the case, the personnel handling the case went to the Zhejiang XX international freight forwarder company to have conversations with its responsible person – Qiu XX, and clearly stated that the Customs would protect IPR at the step of export & import declaration and never allowed any infringing goods exported or imported via the customs district, and any violation would be punished. Finally, Qiu XX was forced to contact with Ma XX in Guangzhou who finally talked with the Afghan merchant over the phone. The Afghan merchant then told relevant goods information to Qiu XX and authorized Qiu XX to accept the investigation. On October 8, the investigation of the case came to an end. Jinhua Customs firmly believed these football sweat suits were infringing goods with a value of RMB 1,276,000. On October 13, Mr. DAVID GILL, the Senior IPR Consultant of Fédération Internationale de Football Association, paid a special visit to Hangzhou Customs and presented a silk banner to Hangzhou Customs for timely seizing the infringing goods and defending the legal rights and interests of Fédération Internationale de Football Association.
(II) Recommendation reasons
1. Form-reviewing officers were capable to confirm the suspected infringing goods based on risk analysis;
2. The case was complicated as the goods involved were purchased by the foreign customer in domestic China but commissioned for export for several times, which making the investigation of the Customs more difficult;
3. The infringing goods seized were in large quantity and with high value.
4. These goods infringed a famous trademark of an international organization, making the case more influential.
IX. The case of Ningbo Customs seizing export counterfeit dry-cell batteries with “TIGERHEAD” trademark
(I) Basic information of the case
On April 20, 2006, a Ningbo XX hardware & tools manufacturing company made export declaration of a batch of dry-cell batteries to Beilun Customs (subordinate to Ningbo Customs), with the quantity declared of 26400 dozens and the value declared of USD 20856. Ningbo Customs found the following doubtful points after conducting systemic risk analysis: Firstly, the main business of the company was hardware & tools manufacturing, but the export goods were dry-cell batteries, making it illogical; secondly, the destination port of these goods was Dubai port, UAE which was risky according to working experiences of the Customs; thirdly, according to the experiences of customs IPR enforcement, batteries were risky commodities, and Ningbo port seized a great number of batteries infringing others’ IPR.
On these grounds, Beilun Customs believed these goods were suspected of infringement, and decided to examine these goods. After examination, the actual goods were dry-cell batteries with “TIGERHEAD” trademark, totaled 1100 boxes (316800 cells). “TIGERHEAD” trademark had been registered with the General Administration of Customs, registration No. as T1996-00149. These dry-cell batteries were identified as infringing goods by the right holder – Guangzhou Tiger Head Battery Group Co., Ltd. which also requested for customs protection according to the law. Ningbo Customs detained these goods according to relevant laws, and made an administrative penalty of confiscating infringing goods and a penalty of RMB 8400 on June 19, 2006 after investigation and trial.
“TIGERHEAD” was a Chinese famous trademark, while Guangzhou Tiger Head Battery Group Co., Ltd. was a long-established company with a history of about 80 years. Currently, its batteries with “TIGERHEAD” and “555” trademarks were the leading products in terms of output and sales volume, export volume and foreign exchange earning amount. On October 15, 2006, during the period of the100th Canton Fair, former Premier Wen Jiabao and former Vice Premier Wu Yi visited the company. In recent years, Ningbo Customs took the enhancement of protection for proprietary IPR of domestic enterprises as an important task, and took various effective measures to convoy these enterprises for creating their self-owned brands and improving the product competitiveness in the international markets, which had brought good results.
(II) Recommendation reasons
1. Customs officers successfully and accurately seized infringing goods after risk analysis;
2. The suspected infringing goods seized were in large quantity.
X. The case of Tianjin Customs seizing export sneakers and clothes infringing the exclusive right to use “ADIDAS”, “NIKE”, “PUMA”, “REEBOK” trademarks
(I) Basic information of the case
At 15:00 p.m. on January 27, 2006, the IPR enforcement officers of Tianjin Customs learned valuable information claiming that several containers with infringing clothes contained would be exported from Tianjin port at the weekends, i.e. January 28 – 29. Based on two container numbers learned, relevant personnel immediately made comprehensive analysis of the trends of port-departure ships and export declaration information. At 18:00 p.m. that day, Tianjin Customs identified one consignment of goods (10 containers) exported to Russia and declared by Tianjin XX international trade company as strongly suspected one. It was further verified that this consignment of goods had been declared to the Customs and would be gathered at the port for customs clearance at 24:00 p.m. on that day, and was scheduled to set sail at 15:00 p.m. on January 28 (Saturday). In an attempt to avoid causing undesired agitation, Tianjin Customs decided to make examination of these goods after all containers had arrived at operation area for ship-loading.
At 22:30 p.m. on January 27, customs officers immediately made overall examination upon the arrival of all goods-carrying containers at ship-loading operation area. They found commodities bearing “Adidas”, “NIKE”, “PUMA”, “REEBOK”, “LACOSTE”, “Levi’s” trademarks in the ten containers, such as sneakers, T-shirts, leather belts, etc., with the number totaling 55289 pieces and the value declared of RMB 423570.
According to investigation results, all these goods were purchased by a foreign merchant who commissioned Tianjin XX international trade company as export broker and prepared to sell these counterfeit goods out abroad. According to the provisions of the Regulations of the People's Republic of China on the Customs Protection of Intellectual Property Rights, the party involved had constituted an unlawful act of exporting goods infringing the exclusive right to use trademark. On April 17, 2006, Tianjin Customs confiscated infringing goods aforesaid and imposed a penalty of RMB 40000 on the party involved according to the law.
(II) Recommendation reasons
1. The one-time seized infringing goods were in gigantic number, totally 10 containers of infringing sneakers and clothes;
2. Customs officers appropriately took the opportunity to make examination and took measures rapidly and accurately. It only lasted 7 hours from receiving clue information to seizing infringing goods, which was a good test of enforcement officers' judgment, working experiences and efficiency;
3. The case was an alert for domestic import & export companies, which should review the IPR status of goods under proxy before accepting the agency business.
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