Chinese Intellectual property rights
Chinese Intellectual property rights management summary
There has been a lot said and written about the problems with intellectual property rights in China by politicians, press and businesses world-wide.
China has many issues with intellectual property rights and their enforcement.
In reviewing intellectual property law with our Chinese legal firm, they point out that China only started developing Commercial and Civil law in the last 40 years. This is the first time China has had Commercial and Civil law in 4,000 years while the England, as an example, started developing these laws over 900 years.
Given this historical lack of Commercial and Civil law in China local business has and still take advantage of this saturation creating many copies of Chinese and international products and brands.
While China is a member of world-wide trading agreements which protects your IP sense 1979, given the size of the IP right infringements Chinese authorities do not have the resources for enforcement.
By having the IP registered in China the enforcement becomes a local not an international IP rights enforcement. This allows enforcement between Chinese companies and Chinese legal firms without often involving Chinese authorities. Chinese people / businesses understand that if you have the correct paper work then the IP can be enforced and therefore the rules and regulation are followed. No company or person in China (or world-wide) want to involve local authorities in legal conflicts.
Chinese IP laws is split into three areas
Note: Trademark law is often referred as brand registration in China which is the processes of registrating your Trademark.
The Chinese are developing the Commercial law which includes intellectual property rights. The laws been developed are independent to international law,
e.g. Trademark registered in the EU, USA, etc. is not generally protected in China and therefore will need registering in China.
If you are manufacturing in China, you will be training and creating a production line for products and brands. If you do not protect the trademarks, patent, etc, the factory will be able to sell your products and use your brand name throughout China legally.
Once your IP rights correctly registered in China they can be successfully enforced.
All IP registrations will need renewing every 10 to 15 years depending on type of registration, i.e. trademarks vs patents.
Please take advance in your local country. We recommend starting with trade organisations, in the UK this would be Chinese British Business Council (CBBC) and British Chamber of Commerce. They should have list of local businesses that specialise in Chinese IP.
If your business has a products / services which would be of interest to Chinese / international market please protecting your IP, specifically trademarks, in China is strongly recommended.
Chinese trademark registration
Chinese trademark registration, is often called brand registration; logos, company, brands, products names, etc.
Having your interest protected outside China, including Hong Kong, will not protect your interest in China.
Note: Please check,
- if your IP is registered in mainland China does this cover Hong Kong?
- if your IP registered in Hong Kong does this cover mainland China?
At the time of writing this paper this was the case.
Any business / person inside or outside China can register a trademark inside China. There is some protection for the major international trademark. We understand that the Chinese authorities when reviewing a trademark application will check Chinese their own international trademark registration database. This database is limited to major trademarks and offer on protection for SME trademarks.
In recent years the Chinese authorities have encouraged Chinese companies to register their trademarks. This has results in many trademarks been registered in China by Chinese companies which are coping existing overseas brand names. This has been causing problems for overseas businesses that have registered trademarks in China.
Once you have registered a trademark in Chinese it is then illegal to copy and trade using the trademark in China regardless of any registration outside China.
Make sure your trademarks are in your company name regardless if you own a Chinese company. Do not allow a third partly company own your trademark regardless of any agreement. The best solution is to registration your brand names, logos product names, etc, at the outset before you involve any parties inside / outside China.
If you wish to allow an organisation in China to use your trademark you can always give written permission. We recommend if so written permission please make sure you included detail terms and conditions in an MOU format.
Trademark registration process
- Appoint a local agent in your country to handle your trademark registration
Appoint an agent from your own country, with a successfully track record of Chinese trademark registration. They in turn, will appoint a Chinese agent; only a Chinese licensed agent can make the application to the Chinese authorities.
By using a local agent from our own country means you will be working in your local language and under the trading terms of your country.
Your local agent, should also have access to the trademark registration database in China and therefore will be able to make checks on what is already registered. This will save time and money with trademark submission for trademarks already registered in China.
You can appoint a local Chinese agent directly. This is only recommended if you know the Chinese agent directly and have a successfully trading relationship.
The trademark registration is straightforward processes in China. Get the trademark ownership wrong and it can stop you trading in China and loss of any investment you made in Chinese.
- Submit the papers to Chinese authorities
Your local agent will handle this matter. Please make sure all the information is correct including the spelling, fonts, etc.
Before submitting make sure you are not using words in the trademark name that are not allowed or will need further supporting documentation. E.g. country names, “British”.
This submission must be accurate. Been 99% right is not enforceable in Chinese trademark law. Please get the papers checked throughout your company before submission.
- Paper are reviewed by the Chinese authorities
The information submitted will reviewed by the Chinese authorities. This is comprehensive and take up to three months to complete.
- Chinese trademark registration rejected
The Chinese authorities can reject the registration request. They will give their reasoning.
If it is for missing information this can often be corrected.
If a change to the brand name spelling, etc, is required then a new submission / money is often required.
- Chinese trademark registration acceptance
You can start using the trademark in Chinese knowing it is protected as soon as you have agreement and the paper work from the Chinese authorities.
Once a trademark registration is accepted there is a two year “cooling off period”. During this period any party can challenge your registration. While it would unlikely that the challenge would be successful, there are no guarantee and it could result in time and money to resolve.
Once the two years has been past the trademark can no longer be challenged unless you stop using the trademark in China for over three years.
- Renewal processes
Depending on the type of registration you may be required to renewal every 10 to 15 years.
If you do not use / trade your trademark in China for three years an application by another business / person (Chinese or international) to take over your trademark can be accepted by the Chinese registration authorities.
Please make sure you have a full understand of the renewal process, rule and regulations, etc, before you completing your trademark registration with your local agent.
Trademark registration enables
Stop Chinese and international companies and people using the registered trademark in Chinese.
Use of your trademark on the internet, e.g. e-Malls, social media, etc. On request, the Chinese platform must take down any use of your trademark who do not have your written consent. You may have do the research of use of your trademark as part of your submission to the Chinese platforms.
Request domains using you registered trademark to be closed.
Stop / control factories reproducing your trademark.
Please note: - This has to be performed proactivity. This will not happen by default.
At this stage of the processes we recommended, if enforcement is needed, use a local Chinese legal firm. If most counties, a local legal contact is far more successful than an international firm. Chinese vs Chinese works faster. It most cases a simple letter for the Chinese legal firm will force the issues.
Your trademark already registered in China
There is a little you can do if your trademark is already registered in China. This why it is so important to start your trademark registration as soon as possible.
- If the trademark is in first 2 years of registration you can appeal to the Chinese registration authorities. This is normally not successful.
- If the Trademark has not been used in China for the last three years. If you can prove this case, you can apply to take over the trademark.
- Purchase the trademark registration. This is often exceptive.
- Make sure your trademark is registered outside China so you a stop and copies of your brand, products, etc been exported into your existing market.
- Create a different trademark name for the Chinese market. This can create an opportunity for a meaningful trade name for the Chinese market.
Chinese patent registration
This process, in the main is the same processes at trademark registration.
Like with trademark registration, we recommend starting with trade organisation in your local country.
Please review patent registration along with Chinese license products.
Chinese software registration
You can register software in China which protect your software from cloning. This is achieved by giving of your first and last 10 to 30 pages of your program coding to the registration authority. You do not a full copy of your system coding.
This generally does not protect your software from revise reverse engineering. Which is the case in most software world-wide.
Copyright is one of the hardest to enforce in China.
We do recommend a Chinese registered trademark on all your copyright material. It will should clear ownership.
Do not do this if you have not registered trademark in China. You will just make it easier to copy material. A local or international company or person can register your trademark in China which could help protect them with copyright enforcement;
i.e. you could be publishing your copyright material in China with their trademark
We recommend take advice / joining professional trading originations from an appropriate industry i.e. music, books, film, etc.
On a positive point, in the last year we have started seeing companies paying for copyright provided;
- You have the correct Chinese IP registration
- You enforce your IP through a Chinese law firm / company
Web page last modified: August 2018