Talking IP: 10 practical tips for protecting your IP in China

Our top ten summary is set out below, and you can catch up with the full session here:

1. Register your trade marks early, and before the squatters get there. China is a “first-to-file” jurisdiction, and so even if you have established rights in other jurisdictions, you need to stake your claim in China before squatters register rights. Failure to take this action could lead to a battle trying to claim back your brand. Register the rights yourself, or get a trusted advisor to register them for you, and make sure the rights are registered in the correct name.
2. It’s useful to register marks nationally as well as internationally. When registering marks nationally in China, consider having a translation/transliteration of the mark registered. Without this, squatters may register and use such Chinese marks to market the same type of products to confuse consumers.
3. Consider copyright recordal in China. For international IP owners, recordal is handled by the Copyright Protection Center of China. This is not expensive and it can help to prove ownership in the event that a copyright dispute arises.
4. For patents, it is important to file the Chinese family patents within the priority period once patents are filed in other jurisdictions. If there is no filing of the corresponding Chinese family patent, the relevant technology covered by the foreign patents will be regarded as within the public domain in China.
5. Consider filing for both utility model and invention patent protection. The former is not subject to substantive examination and will proceed to grant more quickly than the invention patent, although it will only last for 10 years. Once your invention patent is about to be granted (invention patents are subject to substantive examination before grant), you can surrender your utility model. Protection under the invention patent lasts for 20 years from the filing date in China.
6. Don’t be overwhelmed by the scale of the issues that you might face in China. Set a budget to deal with enforcement issues and do what you can. Publicise your successes. Visit China regularly and try to build a rapport with the enforcement agencies that can help you.
7. IP is one tool in your armoury, but there are others. For example, consider embedding technical measures within your products to help safeguard authenticity and deter infringers.
8. Evidence often needs to be notarised and legalised in China to prove it is genuine. This can be a time consuming and expensive exercise. Be aware that the rules are changing such that only documents issued by governmental authorities or organisations based on their authorities, or evidence of identity relationship is mandatorily required to be notarised and/or legalised. For other types, if it can be supported by other evidence, there is no need to do go through the notarisation and legalisation procedure before being produced to the court.
9. If you have the evidence to back it up, consider applying for protection as a geographical indication or applying for well-known mark status. It is more difficult for foreign IP owners than Chinese nationals to obtain geographical indication protection.For example, in 2020, 17 foreign geographical indications were approved by the Trademark Office of China National Intellectual Property Administration (which represents only 2.2% of the geographical indications approved in the whole year). However, with the right evidence, it is possible.“Scotch Whisky” is a good example. Well-known mark status in China offers extended protection compared to normal trade mark protection. This is usually available for protection of (i) unregistered trade marks against the other party’s use or application in the same or similar category of goods or services, or (ii) registered trade marks against the other party’s use or application on dissimilar goods or services. In the past few years, quite a few foreign brands, such as Jeep, Rolls Royce (Chinese translation trade mark), BMW, Peppa Pig (Chinese translation trademark), A.O. Smith, Johnson & Johnson (Chinese translation trade mark), Pirelli, IKEA, Panasonic, BOSS, etc. have been recognized as well-known trade marks through infringement civil cases or administrative procedures in China.
10. The Chinese courts have oscillated on the question of whether applying a mark in China to goods which are for export only is considered to be genuine use of the mark in China.  The current position is that so long as such use is public, genuine and legitimate, and such use is able to distinguish the source of the goods, it should be considered as “trade mark use” under China’s Trademark Law.

Our thanks go to the panel for sharing their insights and practical experience and to Claudia Yun for her contribution to this article.For further information on this topic, please contact Claire O’Brien.

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