Recently we had an opportunity to pick Jennifer Diaz’s mind regarding IP and international trade. Here is the first half of that interaction.
I am thinking about buying products in China, but how can I be sure I am not importing something that violates another company’s IP? I do not wish to be involved in a counterfeit case by accident.
Great question. Pre-Compliance is the answer. As an importer or buyer of products from China you have to perform due diligence of the intellectual property rights on the products you are buying. What does due diligence entail? Comprehensive searches of the United States Patent and Trademark Office (USPTO) and U.S. Customs and Border Protection (CBP) Recordation databases should be part of every importer and buyer’s Pre-Compliance efforts. You do need to know what to look for, so consulting with an expert or professional to determine what intellectual property rights are present in the products that you are importing is important. Once you know your product, know the intellectual property rights involved, and perform the appropriate searches, you can then determine who, if anybody, you need to contact to obtain the appropriate licenses. Your first contact should be the supplier or manufacturer that you are purchasing the products from and always ask the supplier to show you the license agreements they have in place to use the trademarks that exist on the products. And, you can verify that these licenses are legitimate with the trademark owners.
If my suppliers tell me the products are genuine, how can I confirm?
The best way to determine whether your supplier’s products are genuine is to obtain a copy of the license or manufacturing agreement that they have with the intellectual property rights holder. Every supplier should be willing to provide a copy of this license. If their license has a non-disclosure clause and they cannot share with you the specifics of their license, then they can at least provide you with the contact person representing the intellectual property rights holder. Contact that person and get confirmation, in writing, that your supplier has the rights necessary to produce and supply the product you are purchasing and importing. Additionally, you should enter into a distribution agreement with the supplier, by which they represent and warrant that their products are genuine and that they have obtained all the necessary rights.
Jennifer Diaz is a Board Certified International Attorney who is considered an “expert” in international law by the Florida Bar. Ms. Diaz is experienced working with the many Federal agencies including the U.S. Food & Drug Administration (FDA), U.S. Customs and Border Protection (CBP), U.S. Department of Homeland Security (DHS), U.S. Environmental Protection Agency (EPA), and Alcohol and Tobacco Tax and Trade Bureau (TTB) regulating trade. She also produces the Customs and International Trade Law Blog.