Brand protection in china, By Henry Liao, Fruytier Lawyers in Business

BRAND PROTECTION IN CHINA

BY: HENRY LIAO

MANAGING PARTNER, SCHINDERS LAW

MAY 2014

INDEX

• Introduction of Applicable Legislations

• Selection of Manufacturers

• Trademark Registration

• Trademark, Copyright and Patent Protection

• Marketing in China

• Trademark Licensing

• Actions against Infringements

INTRODUCTION OF APPLICABLE LEGISLATIONS

Main sources of laws and regulations on trademark protection in China:

• Laws

• Trademark Law (new amendments were effective from May 1, 2014)

• Copyright Law (new amendments were effective from April 1, 2010)

• Patent Law (new amendments were effective from October 1, 2009)

• Anti-Unfair Competition Law (effective from December 1, 1993)

• Administrative Regulations

• Implementation Regulations for Trademark Law (new amendments

were effective from May 1, 2014)

INTRODUCTION OF APPLICABLE LEGISLATIONS

• Judicial Interpretations

• The Supreme Court’s Interpretations on the Application of

Legislations in Relation to the Trial of Trademark Disputes

(effective from October 16, 2002)

• Regulations by the Supreme Court on the Trial of Disputes

Arisen from Conflicts between Registered Trademark, Trade

Name and Prior Rights (effective from March 1, 2008)

• The Supreme Court’s Interpretations on the Application of

Legislations in Relation to the Trial of Unfair Competition

Disputes (effective from February 1, 2007)

SELECTION OF MANUFACTURERS

• To search for an appropriate manufacturer, you may refer

to the following websites:

• www.made-in-china.com (English and other languages

available)

• www.dhgate.com (English and other languages available)

• www.1688.com (Chinese)

• www.alibaba.com (English and other languages available)

• www.aliexpress.com (English)

http://www.made-in-china.com/





http://www.dhgate.com/

http://www.1688.com/

http://www.alibaba.com/

http://www.aliexpress.com/


Most of these platforms provide detailed information of the

suppliers, such as their contact information and list of

products.

Some platforms verify the bank accounts, corporation

certificates or personal ID of the suppliers. You may also

check out their credit rating and the comments by their

previous consumers.


• Screenshot from www.made-in-china.com


• Screenshot from www.alibaba.com


• To know more about certain manufacturers, you may consult with

relevant associations or departments for further references:

• Industrial associations

• Qualifications and certifications

• Statistics (share of market)

• Complaints and disputes record

• AIC (Administration for Industry and Commerce)

• Establishment files (address, share holders, registered capital, etc.)

• Business scale and scope

• Annual inspections


• Screenshot from the website of Guangzhou Electronic

Industrial Association (located in Guangdong Province,

China)

TRADEMARK REGISTRATION

The first thing you have to do to protect your IP in China is to have

them registered with authority.

According the P.R.C. Trademark Law, the following elements or their

combination could be registered as trademarks:

• Chinese Characters

• Photographs

• Letters

• Sounds

• Numbers

• 3D logos

• Color combinations


Based on our experience, trademark registration is the most economic and effective way to protect your brand. A prior registered trademark is a strong support for you in the future adversarial trademark issues. Therefore, we suggest you to:

• Apply for registration in advance (before or at least simultaneous with any of your market or promotion plan).

• Apply for all your trademarks, logos, trade name (including acronyms) and even slogans.

• Apply for registration in multiple categories covering similar goods/services.


• Example: Some of the “Haier” trademarks registered by a

domestic company (Qingdao Haier Investment

Development Co., Ltd.)

Class 1 4534761 HAIER Class 8 4534748 HAIER







TRADEMARK PROTECTION

To prevent your suppliers in China from applying for registration of

trademarks identical or similar to yours, you need to preserve relevant

evidence for proof of his awareness of your trademarks and his

application in bad faith. Such evidence may include:

• Business contracts;

• Purchasing;

• Invoices; and

• Letters and Emails.


If you do not intend to distribute your products in China at

present, to prevent your suppliers in China from selling your

products in China, we suggest that you:

• Prepare a good contract (including provisions such as return

of templates, prohibition from keeping surplus products and

deal with the moulds after the production); and

• Monitor on e-commerce platforms for non-authorized use of

your trademarks and non-authorized distribution of your

products.


Website monitoring is a cost-effective way to protect your

brand.

Except for the websites mentioned in the first section, we

have the following popular e-commerce platforms:

• www.tmall.com;

• www.taobao.com;

• www.jd.com; and

• www.amazon.cn.

http://www.tmall.com/

http://www.taobao.com/

http://www.jd.com/

http://www.yhd.com/

COPYRIGHT PROTECTION

It is not mandatory to register you works so that to enjoy

copyrights. Nonetheless, registration of you works with

authority may have several advantages:

• Publicize your copyright. Lessen your burden of proof in

relation to ownership of the copyright in the courts;

• Prohibit someone else from using your works on dissimilar

goods/services;

• Be used for evaluation of intangible assets.

Copyright registration is administrated by Copyright Protection

Center of China.

COPYRIGHT PROTECTION Comparison between Trademark Protection and Copyright

Protection

Trademark Protection Copyright Protection

Acquisition of Rights

Registration. Automatic Protection.

Period of Protection

10 years. Needs application for extension.

Lifetime and 50 years after the death of the author.

Scope of Protection

Same or similar goods/services.

Including dissimilar goods/services.

Therefore, some people also apply for copyright registration for their

trademarks, since the Trademark Law prohibits trademark registrations

that infringe upon someone else’s prior rights (including copyrights).

COPYRIGHT PROTECTION

Case: Trademark Application vs. Copyright

Registration No.：1455854

(Status: Invalid

Trademark.)

PATENT PROTECTION

Patent application and registration are administrated by

Patent Office under State Intellectual Property Office of P.R.C.

Patents protected under Chinese laws include:

• Inventions;

• Utility model patents;

• Appearance design patents.

PATENT PROTECTION

Comparison between Trademark Protection and Appearance Design Patent Protection

Trademark Protection Appearance Design Patent Protection

Application Preliminary examination followed by publication and opposition period.

Easy. No material examination.

Period of Protection

10 years. Needs application for extension.

10 years. Not extensible.

Scope of Protection

Same or similar goods/services.

Limited to the product as shown in the picture in the certificate.

PATENT PROTECTION

Case: Trademark Application vs. Appearance Design Patent

Registration No.：1387591

(Status: Trademark application earlier and approved)

MARKETING IN CHINA

If you intend to bring your products to Chinese market, there

are various approaches you may choose:

• To set up branches/subsidiaries in China;

• To engage trading companies as distributors/agents;

• To promote and sell directly online.

TRADEMARK LICENSING

Under Chinese laws, it is not mandatory for trademark Licensing agreements to file with the Trademark Office so as to come into effect.

Nonetheless, it is recommended or sometimes required to file your trademark Licensing with authority.

For example, the bank may require you to provide a recordal certificate when you request the royalty to be wired abroad.

Or, the licensee may want to file and publish the trademark Licensing so that to protect their rights and interests against third parties.

ACTIONS AGAINST INFRINGEMENTS - Evidence Preservation

Before any legal actions be taken against any suspected

infringements, it is important to have the evidence of

infringing activities preserved and notarized.

• Products bearing infringing trademarks;


• Brochures, posters or other commercial documents;


• Websites and domain names:

ACTIONS AGAINST INFRINGEMENTS - Legal Actions

With the preserved and notarized evidence of infringing

activities, you may proceed with one or more of the following

legal actions:

• Cease-and-desist letters

• Arbitrations (especially in domain name cases)

• Lawsuits (trademark infringements and/or unfair competitions)

• Administrative approaches

• Criminal charges

ACTIONS AGAINST INFRINGEMENTS - Cooperation with Authorities

To protect your trademarks from infringement, cooperation

with relevant authorities is important.

• Cooperation with AIC

• Freeze and seize infringing products;

• Freeze and seize equipment and apparatus used by the

infringers to produce infringing products;

• Revoke or alter the trade names that infringes upon

trademark rights.

ACTIONS AGAINST INFRINGEMENTS - Cooperation with Authorities

To protect your trademarks from infringement, cooperation

with relevant authorities is important.

• Cooperation with Customs

• Filing your trademark registration certificates with customs;

• Report to customs and embargos the infringing products.

Q & A

THANK YOU!

Henry Liao Managing Partner

Schinders Law Tel: (86 20) 3810 3687 (Direct)

Fax: (86 20) 3810 3692 Cell: (86) 18666095410

Email: [email protected]

Brand protection in china, By Henry Liao, Fruytier Lawyers in Business

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