Criminal Action Against Trademark Infringement

The Customs and Excise Department is responsible for taking enforcement action against intellectual property right infringement activities.

 

Criminal actions and strategies taken by Customs & Excise Department

Enforcement Strategies Adopted by the Customs & Excise Department:

1. Against the supply and retail of pirated and counterfeit goods: On the supply side, the Department focuses its enforcement efforts against illegal activities at the import and export, manufacturing, wholesale and distribution levels.
2. At the retail level, the Department takes repeated and sustained enforcement actions to eradicate street level piracy and counterfeiting activities.

Customs & Excise Department investigates and takes enforcement actions in respect of complaints alleging infringement of trademarks and complaints alleging false trade descriptions under the Trade Descriptions Ordinance (Cap. 362), Laws of Hong Kong. The Department has extensive powers of search and seizure.

The Department also maintains co-operations with overseas enforcement authorities and trademarks owners in a concerted effort to combat infringement of intellectual property rights.

 

Trade Descriptions Ordinance

Under the Trade Descriptions Ordinance, any person who supplies goods with a false trade description in the course of trade or business, or is in possession of any goods for sale with a false trade description, or sells or possesses for sale any goods with a forged trademark, commits an offence.

The maximum penalty upon conviction is a fine of HK$500,000 and imprisonment for 5 years.

 

Rights and Actions of Trademark Owners

Trademark Owners can make a report to the Customs & Excise Department against the infringers of their trademarks. The following information should be provided to the Department when reporting trademark counterfeiting activity:

• Relevant Trademark Certificate as proof of the trademark having been registered in HKSAR;
• Sample of the genuine product and the offending goods;
• In case the recordation is filed by a party other than the right owner, written authorization for the party to complete the recordation and assist in criminal prosecution or other legal action on the right owner's behalf is required; and
• Appointment letter in regard to a competent examiner by the right holder to conduct subsequent seizure identification and undertake to give evidence and testify in court.

Trademark owners or their authorized agents may seek disclosure of any information or documentation from the Customs and Excise Department in regard to the seizure/detention of goods or articles suspected to be infringing the trademark under the Trade Descriptions Ordinance.

 

For legal advice or services on trade mark infringement or defence to trade mark infringement claim, please contact CHOW & CHEUNG [Tel: +852 2856 3799 or Email: cac@ccsn.hk]

www.ccsn.hk

 

The above contents do not constitute legal advice and it should not be regarded as a substitute for detailed advice in individual cases. Transmission of this information is not intended to create and receipt does not constitute a lawyer-client relationship between Chow & Cheung and the user or browser. Chow & Cheung is not responsible for any third party content which can be accessed through the website.