intellectual property rights in china · intellectual property rights in china intellectual...

12
Intellectual Property Rights In China Intellectual Property Offce is an operating name of the Patent Offce

Upload: ngonhi

Post on 09-Sep-2018

242 views

Category:

Documents


2 download

TRANSCRIPT

Page 1: Intellectual Property Rights in China · Intellectual property rights in China Intellectual Property Rights in China If you plan to do business in China, or if you are already trading

Intellectual Property Rights In China

Intellectual Property Office is an operating name of the Patent Office

Contents

Intellectual Property Rights in China

Intellectual Property Rights In China 3

What Are Intellectual Property Rights 3

International Considerations 3

Treaties And Reciprocal Agreements 4

Intellectual Property Rights - Systems In China 4

Copyright 4

Patents Utility Models And Design Rights 4

Trade Marks 5

Customs Recordal 5

Registering And Enforcing Intellectual Property Rights In China 5

Enforcing IP Rights In China 6

Self-Help Considerations 6

Potential Problems Faced In China And How To Deal With Them 7

Avoiding Problems 7

Who Should Take Responsibility For Your IP Protection 8

Top Tips For IP Protection In China 8

Where To Get Intellectual Property Help In China 9

1

Intellectual property rights in China

Intellectual Property Rights in China

If you plan to do business in China or if you are already trading there it is essential to know how to use guard and enforce the rights you have over the intellectual property (IP) that you or your business own

This guide explains about IP in general and gives guidance on how to apply these principles in the Chinese market It describes the issues you may face with IP infringement in China offers advice on how you can effectively tackle these and provides links to sources of further help

What are intellectual property rights

Intellectual property (IP) is a term referring to a brand invention design or other kind of creation which a person or business has legal rights over Almost all businesses own some form of IP which could be a business asset

Common types of IP include

y Copyright - this protects written or published works such as books songs films web content and artistic works

y Patents - this protects commercial inventions eg a new business product or process

y Designs - this protects designs such as drawings or computer models

y Trade marks - this protects signs symbols logos words or sounds that distinguish your products and services from those of your competitors

IP can be either registered or unregistered

With unregistered IP you automatically have legal rights over your creation Unregistered forms of IP include copyright unregistered design rights common law trade marks and database rights confidential information and trade secrets

With registered IP you will have to apply to an authority such as the Intellectual Property Office in the UK to have your rights recognised If you do not do this others are free to exploit your creations Registered forms of IP include patents registered trade marks and registered design rights

International considerations

China has been a World Trade Organisation (WTO) member since 2001 WTO member nations must include some IP protection in their national laws This means that if you are doing business with China you will find some similarity between local IP law and enforcement procedures and those in force in the UK

3

Treaties and reciprocal agreements

China is also a signatory to the following international IP agreements

y the Paris Convention - under this any person from a signatory state can apply for a patent or trade mark in any other signatory state and will be given the same enforcement rights and status as a national of that country would be

y the Berne Convention - under this each member state recognises the copyright of authors from other member states in the same way as the copyright of its own nationals

y the Madrid Protocol - this is a central system for obtaining a lsquobundlersquo of national trade mark registrations in different jurisdictions through a single application

y the Patent Cooperation Treaty - this works in much the same way as the Madrid Protocol but for patent applications

China is not a signatory to the Hague Agreement which allows the protection of designs in multiple countries through a single filing

Intellectual property rights - systems in China

China has been a member of the World Trade Organisation (WTO) since 2001 This requires member nations to establish intellectual property (IP) laws whose effect is in line with minimum standards As a result there should be few major differences between Chinarsquos laws and those of other developed countries

Copyright

China is a signatory to the Berne Convention on copyright Copyright legislation is based on Chinarsquos 1990 Copyright Law amended in 2001 and the Copyright Implementing Regulations of 2002

There is no requirement to register copyright in China However it is advisable to register your copyright so that you can prove ownership in any dispute or court case

Registration is made with the National Copyright Administration the authority responsible for the administration and enforcement of copyright and related issues in China

Patents utility models and design rights

Chinarsquos Patent Law deals with the protection of rights over technological inventions as in the UK but it also covers utility models and designs (also known as lsquodesign patentsrsquo) Invention patents give protection for a maximum of 20 years utility models for ten and each is subject to the payment of annual fees

It may be a good idea to apply to register a product as a utility model if your invention patent is not granted

4

Chinese patent law operates under the lsquofirst to filersquo principle - that is if two people apply for a patent on an identical invention the first one to file the application will be awarded the patent

Intellectual Property Rights in China

Designs are covered by the Chinese Patent Law The lawrsquos design rights provisions are similar to those for utility models with protection for a maximum of ten years

Trade marks

The Chinese trade mark system operates in a similar way to the UKrsquos giving protection for designs symbols colours or other devices used to identify a businessrsquo products or services

Registration by foreign businesses under the Madrid Protocol takes about 18 months while a direct registration using the Chinese domestic system will usually take between two and a half and three and a half years - and in some cases up to four years

A trade mark is valid for ten years after which it may be renewed indefinitely for further ten-year periods

Customs recordal

A trade mark owner may register - or lsquomake a recordal ofrsquo - their trade mark with Chinese Customs This allows the local Customs offices to check and intercept infringing goods being imported or exported either at their own initiative or following an alert by the rights owner Applying for a recordal is generally done through a lawyer or local attorney and costs about pound50 for the official fee plus a lawyerrsquos fee

Registering and enforcing intellectual property rights in China

To enjoy most types of intellectual property (IP) rights in China you should register them

For patents (including inventions utility models and industrial designs) individual registrations must be made in China But for rights other than industrial designs you can apply under the terms of the Patent Cooperation Treaty which is usually easier and quicker

For trade marks you can either register within China or use the Madrid Protocol to gain unitary rights under national or Community Trade Mark registration systems In the case of well-known brands there is protection under the Anti-Unfair Competition Law - even if unregistered - but this is a complex area of law

For copyright no registration is required as your rights are protected automatically - but registering your copyright with the State Copyright Bureau may help you prove ownership in the case of a dispute Registration can cost up to RMB 1000 depending on the type of work being registered and takes around one month You will need to provide proof of identity and supporting documentation as well as completing the relevant application forms

lsquoPriority rightsrsquo under the Paris Convention can help in the local registration of trade marks designs and patents by allowing rights previously registered elsewhere to become effective in China if filed within a time limit

Some UK patent and trade mark attorneys can cover China However foreign law companies are not allowed to practice Chinese law directly - they can only do so by lsquoentrustingrsquo Chinese law firms

5

Enforcing IP rights in China

The main options for enforcing your IP rights in China include administrative action customs seizure and civil litigation while the State may prosecute offenders under the criminal law

Before involving the authorities it may save money and effort to start by sending a lawyerrsquos lsquocease and desistrsquo letter to an infringer threatening action

You should also bear in mind that negotiation and mediation are very much a part of the Chinese business psyche Many IP disputes are solved through dispute resolution either before or after going to court

The usual choice for enforcing IP rights in China is between administrative action and civil litigation

y Administrative action - the first step is to file a complaint with the local office of the appropriate administrative organisation Trade mark and counterfeiting cases are often straightforward especially where the infringement itself is unambiguous For those involving patents and copyrights however the administrative authoritiesrsquo enforcement powers are less clear-cut You will also need to collect evidence in order to trigger a raid

y Civil litigation - an action may be started in the IP Tribunals There are several advantages to this including the deterrent effect of a high-profile court case and the potential for the award of damages However civil cases usually mean a longer timescale (generally a maximum of 12 months) and greater bureaucracy

The customs system in China is unusual for its ability to intercept fakes on export as well as import China Customs relies on the intelligence it receives about illegal shipments You can help them by passing on the names of known counterfeiters routes and the details of genuine goods

Self-help considerations

There are various things you can do to make it harder in general for infringers to copy your product For example you could

y Think about the design of your product and how easy it would be for somebody to reproduce it without seeing your original designs

y When you hire staff have effective IP-related clauses in employment contracts Also make sure you educate your employees on IP rights and protection

y Have sound physical protection and destruction methods for documents drawings tooling samples machinery etc

y Make sure there are no lsquoleakagesrsquo of packaging that might be used by counterfeiters to pass off fake product

y Check production over-runs to make sure that genuine product is not being sold under a different name

6

Potential problems faced in China and how to deal with them

Intellectual Property Rights in China

Chinarsquos rapid economic development leading to its accession to the World Trade Organisation in 2001 has been the cause for major reforms in its intellectual property (IP) laws China has introduced legislation covering every aspect of the protection of IP Most Western lawyers find the resulting body of law comprehensive systematic and familiar

There is a difference between having adequate laws and achieving their effective enforcement Most believe the Chinese authorities are trying to improve matters and some experts are convinced that real progress is being made

The sheer scale of Chinarsquos growth as its economy expands vigorously (around 10 per cent a year) creates problems as well as advantages Illegal economic activities like counterfeiting and other forms of IP infringement have been a familiar repercussion of many nationsrsquo economic development In Chinarsquos case changes have been particularly rapid which has caused some real problems in IP enforcement

Avoiding problems

The most important way to avoid problems when defending IP rights in China is to be prepared To make sure that you can anticipate any potential issues you should

y take advice from Chinese IP rights experts

y consult publications and websites on Chinese IP rights and protection in general

y carry out risk assessment and due diligence checks on any organisations and individuals you deal with

y take professional advice from other experts - eg lawyers local diplomatic posts Chambers of Commerce and the China-Britain Business Council

y talk to other businesses already doing similar business in China

y consult agents distributors and suppliers on how best to safeguard your rights

y check with trade mark or patent attorneys to see whether there have been previous registrations of your own marks or other IP in China

y be aware of the possibility of small-scale infringers

y make sure your contracts are clear and well-drafted and continually monitor their compliance

y stick to familiar business methods - donrsquot be tempted to do things differently because yoursquore trading in a different country

7

Who should take responsibility for your IP protection

You should make sure that everyone in your business takes some responsibility for IP protection Many businesses depend on the integrity of their IP and it can often be one of their most valuable assets So it should be given proper attention by both management and employees as well as other businesses that you have relationships with

It may be sensible to nominate a manager to have particular responsibility for understanding and protecting your IP rights In businesses with legal departments a legally-trained manager would be a good choice

Top tips for IP protection in China

The most important things you can do to protect your IP rights in China are

y stick to your normal business instincts

y do as much as you can to prevent infringements in the first place - prevention is better than the cure

y assess the risks of the market and make preparations

y take self-help measures to protect your IP

y make sure everyone in your business values its IP including you

y register your IP rights

y create good relationships with organisations that can help you

y consider mediation before defensive action

y once beyond mediation civil litigation has a much more potent deterrent effect than administrative enforcement

8

Where to get intellectual property help in China

Intellectual Property Rights in China

Whether yoursquore resident in and doing business in China or trading internationally with the country there are a number of professional organisations that can offer you advice and support

y UK diplomatic posts - there is a British Embassy in Beijing and Consulates-General in Shanghai Guangzhou Chongqing and Hong Kong They cannot intervene with Chinese legal or administrative processes but they may be able to keep a watching brief when cases are brought to Chinese courts or lobby on your behalf if progress is slow httpukinchinafcogovuken

y British Chambers of Commerce (BritCham) operate in Beijing Shanghai Guangzhou Hong Kong Chengdu and Wuhan BritCham organise intellectual property (IP) related events and their members include local UK lawyers as well as businesses with direct experience of IP issues httpwwwbritishchambercncontent britcham-membership

y The China-Britain Business Council (CBBC) offers a wide range of services including cultural awareness training trade missions and incorporation help httpwwwcbbcorg

y The European Commission-run China IPR SME Helpdesk offers free information training and first-line advice about protecting and enforcing IP in China httpwwwchina-iprhelpdeskeu

y The Quality Brands Protection Committee (QBPC) based in Beijing works with authorities to improve the effectiveness and transparency of IP policy and legislation httpwwwqbpcorgcn

y The European Union (EU) Chamber of Commerce in China (EUCCC) helps and supports contacts between businesses based in EU member states and China httpwwweuropeanchambercomcnenabout-theshychamber

Concept House Cardiff Road Newport NP10 8QQ

Tel 0300 300 2000 Fax 01633 817 777

wwwgovukipo

For copies in alternative formats please contact our Information Centre

When you no longer need this booklet please recycle it

copy Crown copyright 2013

This document is free for re-use under the terms of the Open Government Licence

Images within this document are licensed by Ingram Image

Published March 2013 DPS-002394

Page 2: Intellectual Property Rights in China · Intellectual property rights in China Intellectual Property Rights in China If you plan to do business in China, or if you are already trading

Contents

Intellectual Property Rights in China

Intellectual Property Rights In China 3

What Are Intellectual Property Rights 3

International Considerations 3

Treaties And Reciprocal Agreements 4

Intellectual Property Rights - Systems In China 4

Copyright 4

Patents Utility Models And Design Rights 4

Trade Marks 5

Customs Recordal 5

Registering And Enforcing Intellectual Property Rights In China 5

Enforcing IP Rights In China 6

Self-Help Considerations 6

Potential Problems Faced In China And How To Deal With Them 7

Avoiding Problems 7

Who Should Take Responsibility For Your IP Protection 8

Top Tips For IP Protection In China 8

Where To Get Intellectual Property Help In China 9

1

Intellectual property rights in China

Intellectual Property Rights in China

If you plan to do business in China or if you are already trading there it is essential to know how to use guard and enforce the rights you have over the intellectual property (IP) that you or your business own

This guide explains about IP in general and gives guidance on how to apply these principles in the Chinese market It describes the issues you may face with IP infringement in China offers advice on how you can effectively tackle these and provides links to sources of further help

What are intellectual property rights

Intellectual property (IP) is a term referring to a brand invention design or other kind of creation which a person or business has legal rights over Almost all businesses own some form of IP which could be a business asset

Common types of IP include

y Copyright - this protects written or published works such as books songs films web content and artistic works

y Patents - this protects commercial inventions eg a new business product or process

y Designs - this protects designs such as drawings or computer models

y Trade marks - this protects signs symbols logos words or sounds that distinguish your products and services from those of your competitors

IP can be either registered or unregistered

With unregistered IP you automatically have legal rights over your creation Unregistered forms of IP include copyright unregistered design rights common law trade marks and database rights confidential information and trade secrets

With registered IP you will have to apply to an authority such as the Intellectual Property Office in the UK to have your rights recognised If you do not do this others are free to exploit your creations Registered forms of IP include patents registered trade marks and registered design rights

International considerations

China has been a World Trade Organisation (WTO) member since 2001 WTO member nations must include some IP protection in their national laws This means that if you are doing business with China you will find some similarity between local IP law and enforcement procedures and those in force in the UK

3

Treaties and reciprocal agreements

China is also a signatory to the following international IP agreements

y the Paris Convention - under this any person from a signatory state can apply for a patent or trade mark in any other signatory state and will be given the same enforcement rights and status as a national of that country would be

y the Berne Convention - under this each member state recognises the copyright of authors from other member states in the same way as the copyright of its own nationals

y the Madrid Protocol - this is a central system for obtaining a lsquobundlersquo of national trade mark registrations in different jurisdictions through a single application

y the Patent Cooperation Treaty - this works in much the same way as the Madrid Protocol but for patent applications

China is not a signatory to the Hague Agreement which allows the protection of designs in multiple countries through a single filing

Intellectual property rights - systems in China

China has been a member of the World Trade Organisation (WTO) since 2001 This requires member nations to establish intellectual property (IP) laws whose effect is in line with minimum standards As a result there should be few major differences between Chinarsquos laws and those of other developed countries

Copyright

China is a signatory to the Berne Convention on copyright Copyright legislation is based on Chinarsquos 1990 Copyright Law amended in 2001 and the Copyright Implementing Regulations of 2002

There is no requirement to register copyright in China However it is advisable to register your copyright so that you can prove ownership in any dispute or court case

Registration is made with the National Copyright Administration the authority responsible for the administration and enforcement of copyright and related issues in China

Patents utility models and design rights

Chinarsquos Patent Law deals with the protection of rights over technological inventions as in the UK but it also covers utility models and designs (also known as lsquodesign patentsrsquo) Invention patents give protection for a maximum of 20 years utility models for ten and each is subject to the payment of annual fees

It may be a good idea to apply to register a product as a utility model if your invention patent is not granted

4

Chinese patent law operates under the lsquofirst to filersquo principle - that is if two people apply for a patent on an identical invention the first one to file the application will be awarded the patent

Intellectual Property Rights in China

Designs are covered by the Chinese Patent Law The lawrsquos design rights provisions are similar to those for utility models with protection for a maximum of ten years

Trade marks

The Chinese trade mark system operates in a similar way to the UKrsquos giving protection for designs symbols colours or other devices used to identify a businessrsquo products or services

Registration by foreign businesses under the Madrid Protocol takes about 18 months while a direct registration using the Chinese domestic system will usually take between two and a half and three and a half years - and in some cases up to four years

A trade mark is valid for ten years after which it may be renewed indefinitely for further ten-year periods

Customs recordal

A trade mark owner may register - or lsquomake a recordal ofrsquo - their trade mark with Chinese Customs This allows the local Customs offices to check and intercept infringing goods being imported or exported either at their own initiative or following an alert by the rights owner Applying for a recordal is generally done through a lawyer or local attorney and costs about pound50 for the official fee plus a lawyerrsquos fee

Registering and enforcing intellectual property rights in China

To enjoy most types of intellectual property (IP) rights in China you should register them

For patents (including inventions utility models and industrial designs) individual registrations must be made in China But for rights other than industrial designs you can apply under the terms of the Patent Cooperation Treaty which is usually easier and quicker

For trade marks you can either register within China or use the Madrid Protocol to gain unitary rights under national or Community Trade Mark registration systems In the case of well-known brands there is protection under the Anti-Unfair Competition Law - even if unregistered - but this is a complex area of law

For copyright no registration is required as your rights are protected automatically - but registering your copyright with the State Copyright Bureau may help you prove ownership in the case of a dispute Registration can cost up to RMB 1000 depending on the type of work being registered and takes around one month You will need to provide proof of identity and supporting documentation as well as completing the relevant application forms

lsquoPriority rightsrsquo under the Paris Convention can help in the local registration of trade marks designs and patents by allowing rights previously registered elsewhere to become effective in China if filed within a time limit

Some UK patent and trade mark attorneys can cover China However foreign law companies are not allowed to practice Chinese law directly - they can only do so by lsquoentrustingrsquo Chinese law firms

5

Enforcing IP rights in China

The main options for enforcing your IP rights in China include administrative action customs seizure and civil litigation while the State may prosecute offenders under the criminal law

Before involving the authorities it may save money and effort to start by sending a lawyerrsquos lsquocease and desistrsquo letter to an infringer threatening action

You should also bear in mind that negotiation and mediation are very much a part of the Chinese business psyche Many IP disputes are solved through dispute resolution either before or after going to court

The usual choice for enforcing IP rights in China is between administrative action and civil litigation

y Administrative action - the first step is to file a complaint with the local office of the appropriate administrative organisation Trade mark and counterfeiting cases are often straightforward especially where the infringement itself is unambiguous For those involving patents and copyrights however the administrative authoritiesrsquo enforcement powers are less clear-cut You will also need to collect evidence in order to trigger a raid

y Civil litigation - an action may be started in the IP Tribunals There are several advantages to this including the deterrent effect of a high-profile court case and the potential for the award of damages However civil cases usually mean a longer timescale (generally a maximum of 12 months) and greater bureaucracy

The customs system in China is unusual for its ability to intercept fakes on export as well as import China Customs relies on the intelligence it receives about illegal shipments You can help them by passing on the names of known counterfeiters routes and the details of genuine goods

Self-help considerations

There are various things you can do to make it harder in general for infringers to copy your product For example you could

y Think about the design of your product and how easy it would be for somebody to reproduce it without seeing your original designs

y When you hire staff have effective IP-related clauses in employment contracts Also make sure you educate your employees on IP rights and protection

y Have sound physical protection and destruction methods for documents drawings tooling samples machinery etc

y Make sure there are no lsquoleakagesrsquo of packaging that might be used by counterfeiters to pass off fake product

y Check production over-runs to make sure that genuine product is not being sold under a different name

6

Potential problems faced in China and how to deal with them

Intellectual Property Rights in China

Chinarsquos rapid economic development leading to its accession to the World Trade Organisation in 2001 has been the cause for major reforms in its intellectual property (IP) laws China has introduced legislation covering every aspect of the protection of IP Most Western lawyers find the resulting body of law comprehensive systematic and familiar

There is a difference between having adequate laws and achieving their effective enforcement Most believe the Chinese authorities are trying to improve matters and some experts are convinced that real progress is being made

The sheer scale of Chinarsquos growth as its economy expands vigorously (around 10 per cent a year) creates problems as well as advantages Illegal economic activities like counterfeiting and other forms of IP infringement have been a familiar repercussion of many nationsrsquo economic development In Chinarsquos case changes have been particularly rapid which has caused some real problems in IP enforcement

Avoiding problems

The most important way to avoid problems when defending IP rights in China is to be prepared To make sure that you can anticipate any potential issues you should

y take advice from Chinese IP rights experts

y consult publications and websites on Chinese IP rights and protection in general

y carry out risk assessment and due diligence checks on any organisations and individuals you deal with

y take professional advice from other experts - eg lawyers local diplomatic posts Chambers of Commerce and the China-Britain Business Council

y talk to other businesses already doing similar business in China

y consult agents distributors and suppliers on how best to safeguard your rights

y check with trade mark or patent attorneys to see whether there have been previous registrations of your own marks or other IP in China

y be aware of the possibility of small-scale infringers

y make sure your contracts are clear and well-drafted and continually monitor their compliance

y stick to familiar business methods - donrsquot be tempted to do things differently because yoursquore trading in a different country

7

Who should take responsibility for your IP protection

You should make sure that everyone in your business takes some responsibility for IP protection Many businesses depend on the integrity of their IP and it can often be one of their most valuable assets So it should be given proper attention by both management and employees as well as other businesses that you have relationships with

It may be sensible to nominate a manager to have particular responsibility for understanding and protecting your IP rights In businesses with legal departments a legally-trained manager would be a good choice

Top tips for IP protection in China

The most important things you can do to protect your IP rights in China are

y stick to your normal business instincts

y do as much as you can to prevent infringements in the first place - prevention is better than the cure

y assess the risks of the market and make preparations

y take self-help measures to protect your IP

y make sure everyone in your business values its IP including you

y register your IP rights

y create good relationships with organisations that can help you

y consider mediation before defensive action

y once beyond mediation civil litigation has a much more potent deterrent effect than administrative enforcement

8

Where to get intellectual property help in China

Intellectual Property Rights in China

Whether yoursquore resident in and doing business in China or trading internationally with the country there are a number of professional organisations that can offer you advice and support

y UK diplomatic posts - there is a British Embassy in Beijing and Consulates-General in Shanghai Guangzhou Chongqing and Hong Kong They cannot intervene with Chinese legal or administrative processes but they may be able to keep a watching brief when cases are brought to Chinese courts or lobby on your behalf if progress is slow httpukinchinafcogovuken

y British Chambers of Commerce (BritCham) operate in Beijing Shanghai Guangzhou Hong Kong Chengdu and Wuhan BritCham organise intellectual property (IP) related events and their members include local UK lawyers as well as businesses with direct experience of IP issues httpwwwbritishchambercncontent britcham-membership

y The China-Britain Business Council (CBBC) offers a wide range of services including cultural awareness training trade missions and incorporation help httpwwwcbbcorg

y The European Commission-run China IPR SME Helpdesk offers free information training and first-line advice about protecting and enforcing IP in China httpwwwchina-iprhelpdeskeu

y The Quality Brands Protection Committee (QBPC) based in Beijing works with authorities to improve the effectiveness and transparency of IP policy and legislation httpwwwqbpcorgcn

y The European Union (EU) Chamber of Commerce in China (EUCCC) helps and supports contacts between businesses based in EU member states and China httpwwweuropeanchambercomcnenabout-theshychamber

Concept House Cardiff Road Newport NP10 8QQ

Tel 0300 300 2000 Fax 01633 817 777

wwwgovukipo

For copies in alternative formats please contact our Information Centre

When you no longer need this booklet please recycle it

copy Crown copyright 2013

This document is free for re-use under the terms of the Open Government Licence

Images within this document are licensed by Ingram Image

Published March 2013 DPS-002394

Page 3: Intellectual Property Rights in China · Intellectual property rights in China Intellectual Property Rights in China If you plan to do business in China, or if you are already trading

Intellectual property rights in China

Intellectual Property Rights in China

If you plan to do business in China or if you are already trading there it is essential to know how to use guard and enforce the rights you have over the intellectual property (IP) that you or your business own

This guide explains about IP in general and gives guidance on how to apply these principles in the Chinese market It describes the issues you may face with IP infringement in China offers advice on how you can effectively tackle these and provides links to sources of further help

What are intellectual property rights

Intellectual property (IP) is a term referring to a brand invention design or other kind of creation which a person or business has legal rights over Almost all businesses own some form of IP which could be a business asset

Common types of IP include

y Copyright - this protects written or published works such as books songs films web content and artistic works

y Patents - this protects commercial inventions eg a new business product or process

y Designs - this protects designs such as drawings or computer models

y Trade marks - this protects signs symbols logos words or sounds that distinguish your products and services from those of your competitors

IP can be either registered or unregistered

With unregistered IP you automatically have legal rights over your creation Unregistered forms of IP include copyright unregistered design rights common law trade marks and database rights confidential information and trade secrets

With registered IP you will have to apply to an authority such as the Intellectual Property Office in the UK to have your rights recognised If you do not do this others are free to exploit your creations Registered forms of IP include patents registered trade marks and registered design rights

International considerations

China has been a World Trade Organisation (WTO) member since 2001 WTO member nations must include some IP protection in their national laws This means that if you are doing business with China you will find some similarity between local IP law and enforcement procedures and those in force in the UK

3

Treaties and reciprocal agreements

China is also a signatory to the following international IP agreements

y the Paris Convention - under this any person from a signatory state can apply for a patent or trade mark in any other signatory state and will be given the same enforcement rights and status as a national of that country would be

y the Berne Convention - under this each member state recognises the copyright of authors from other member states in the same way as the copyright of its own nationals

y the Madrid Protocol - this is a central system for obtaining a lsquobundlersquo of national trade mark registrations in different jurisdictions through a single application

y the Patent Cooperation Treaty - this works in much the same way as the Madrid Protocol but for patent applications

China is not a signatory to the Hague Agreement which allows the protection of designs in multiple countries through a single filing

Intellectual property rights - systems in China

China has been a member of the World Trade Organisation (WTO) since 2001 This requires member nations to establish intellectual property (IP) laws whose effect is in line with minimum standards As a result there should be few major differences between Chinarsquos laws and those of other developed countries

Copyright

China is a signatory to the Berne Convention on copyright Copyright legislation is based on Chinarsquos 1990 Copyright Law amended in 2001 and the Copyright Implementing Regulations of 2002

There is no requirement to register copyright in China However it is advisable to register your copyright so that you can prove ownership in any dispute or court case

Registration is made with the National Copyright Administration the authority responsible for the administration and enforcement of copyright and related issues in China

Patents utility models and design rights

Chinarsquos Patent Law deals with the protection of rights over technological inventions as in the UK but it also covers utility models and designs (also known as lsquodesign patentsrsquo) Invention patents give protection for a maximum of 20 years utility models for ten and each is subject to the payment of annual fees

It may be a good idea to apply to register a product as a utility model if your invention patent is not granted

4

Chinese patent law operates under the lsquofirst to filersquo principle - that is if two people apply for a patent on an identical invention the first one to file the application will be awarded the patent

Intellectual Property Rights in China

Designs are covered by the Chinese Patent Law The lawrsquos design rights provisions are similar to those for utility models with protection for a maximum of ten years

Trade marks

The Chinese trade mark system operates in a similar way to the UKrsquos giving protection for designs symbols colours or other devices used to identify a businessrsquo products or services

Registration by foreign businesses under the Madrid Protocol takes about 18 months while a direct registration using the Chinese domestic system will usually take between two and a half and three and a half years - and in some cases up to four years

A trade mark is valid for ten years after which it may be renewed indefinitely for further ten-year periods

Customs recordal

A trade mark owner may register - or lsquomake a recordal ofrsquo - their trade mark with Chinese Customs This allows the local Customs offices to check and intercept infringing goods being imported or exported either at their own initiative or following an alert by the rights owner Applying for a recordal is generally done through a lawyer or local attorney and costs about pound50 for the official fee plus a lawyerrsquos fee

Registering and enforcing intellectual property rights in China

To enjoy most types of intellectual property (IP) rights in China you should register them

For patents (including inventions utility models and industrial designs) individual registrations must be made in China But for rights other than industrial designs you can apply under the terms of the Patent Cooperation Treaty which is usually easier and quicker

For trade marks you can either register within China or use the Madrid Protocol to gain unitary rights under national or Community Trade Mark registration systems In the case of well-known brands there is protection under the Anti-Unfair Competition Law - even if unregistered - but this is a complex area of law

For copyright no registration is required as your rights are protected automatically - but registering your copyright with the State Copyright Bureau may help you prove ownership in the case of a dispute Registration can cost up to RMB 1000 depending on the type of work being registered and takes around one month You will need to provide proof of identity and supporting documentation as well as completing the relevant application forms

lsquoPriority rightsrsquo under the Paris Convention can help in the local registration of trade marks designs and patents by allowing rights previously registered elsewhere to become effective in China if filed within a time limit

Some UK patent and trade mark attorneys can cover China However foreign law companies are not allowed to practice Chinese law directly - they can only do so by lsquoentrustingrsquo Chinese law firms

5

Enforcing IP rights in China

The main options for enforcing your IP rights in China include administrative action customs seizure and civil litigation while the State may prosecute offenders under the criminal law

Before involving the authorities it may save money and effort to start by sending a lawyerrsquos lsquocease and desistrsquo letter to an infringer threatening action

You should also bear in mind that negotiation and mediation are very much a part of the Chinese business psyche Many IP disputes are solved through dispute resolution either before or after going to court

The usual choice for enforcing IP rights in China is between administrative action and civil litigation

y Administrative action - the first step is to file a complaint with the local office of the appropriate administrative organisation Trade mark and counterfeiting cases are often straightforward especially where the infringement itself is unambiguous For those involving patents and copyrights however the administrative authoritiesrsquo enforcement powers are less clear-cut You will also need to collect evidence in order to trigger a raid

y Civil litigation - an action may be started in the IP Tribunals There are several advantages to this including the deterrent effect of a high-profile court case and the potential for the award of damages However civil cases usually mean a longer timescale (generally a maximum of 12 months) and greater bureaucracy

The customs system in China is unusual for its ability to intercept fakes on export as well as import China Customs relies on the intelligence it receives about illegal shipments You can help them by passing on the names of known counterfeiters routes and the details of genuine goods

Self-help considerations

There are various things you can do to make it harder in general for infringers to copy your product For example you could

y Think about the design of your product and how easy it would be for somebody to reproduce it without seeing your original designs

y When you hire staff have effective IP-related clauses in employment contracts Also make sure you educate your employees on IP rights and protection

y Have sound physical protection and destruction methods for documents drawings tooling samples machinery etc

y Make sure there are no lsquoleakagesrsquo of packaging that might be used by counterfeiters to pass off fake product

y Check production over-runs to make sure that genuine product is not being sold under a different name

6

Potential problems faced in China and how to deal with them

Intellectual Property Rights in China

Chinarsquos rapid economic development leading to its accession to the World Trade Organisation in 2001 has been the cause for major reforms in its intellectual property (IP) laws China has introduced legislation covering every aspect of the protection of IP Most Western lawyers find the resulting body of law comprehensive systematic and familiar

There is a difference between having adequate laws and achieving their effective enforcement Most believe the Chinese authorities are trying to improve matters and some experts are convinced that real progress is being made

The sheer scale of Chinarsquos growth as its economy expands vigorously (around 10 per cent a year) creates problems as well as advantages Illegal economic activities like counterfeiting and other forms of IP infringement have been a familiar repercussion of many nationsrsquo economic development In Chinarsquos case changes have been particularly rapid which has caused some real problems in IP enforcement

Avoiding problems

The most important way to avoid problems when defending IP rights in China is to be prepared To make sure that you can anticipate any potential issues you should

y take advice from Chinese IP rights experts

y consult publications and websites on Chinese IP rights and protection in general

y carry out risk assessment and due diligence checks on any organisations and individuals you deal with

y take professional advice from other experts - eg lawyers local diplomatic posts Chambers of Commerce and the China-Britain Business Council

y talk to other businesses already doing similar business in China

y consult agents distributors and suppliers on how best to safeguard your rights

y check with trade mark or patent attorneys to see whether there have been previous registrations of your own marks or other IP in China

y be aware of the possibility of small-scale infringers

y make sure your contracts are clear and well-drafted and continually monitor their compliance

y stick to familiar business methods - donrsquot be tempted to do things differently because yoursquore trading in a different country

7

Who should take responsibility for your IP protection

You should make sure that everyone in your business takes some responsibility for IP protection Many businesses depend on the integrity of their IP and it can often be one of their most valuable assets So it should be given proper attention by both management and employees as well as other businesses that you have relationships with

It may be sensible to nominate a manager to have particular responsibility for understanding and protecting your IP rights In businesses with legal departments a legally-trained manager would be a good choice

Top tips for IP protection in China

The most important things you can do to protect your IP rights in China are

y stick to your normal business instincts

y do as much as you can to prevent infringements in the first place - prevention is better than the cure

y assess the risks of the market and make preparations

y take self-help measures to protect your IP

y make sure everyone in your business values its IP including you

y register your IP rights

y create good relationships with organisations that can help you

y consider mediation before defensive action

y once beyond mediation civil litigation has a much more potent deterrent effect than administrative enforcement

8

Where to get intellectual property help in China

Intellectual Property Rights in China

Whether yoursquore resident in and doing business in China or trading internationally with the country there are a number of professional organisations that can offer you advice and support

y UK diplomatic posts - there is a British Embassy in Beijing and Consulates-General in Shanghai Guangzhou Chongqing and Hong Kong They cannot intervene with Chinese legal or administrative processes but they may be able to keep a watching brief when cases are brought to Chinese courts or lobby on your behalf if progress is slow httpukinchinafcogovuken

y British Chambers of Commerce (BritCham) operate in Beijing Shanghai Guangzhou Hong Kong Chengdu and Wuhan BritCham organise intellectual property (IP) related events and their members include local UK lawyers as well as businesses with direct experience of IP issues httpwwwbritishchambercncontent britcham-membership

y The China-Britain Business Council (CBBC) offers a wide range of services including cultural awareness training trade missions and incorporation help httpwwwcbbcorg

y The European Commission-run China IPR SME Helpdesk offers free information training and first-line advice about protecting and enforcing IP in China httpwwwchina-iprhelpdeskeu

y The Quality Brands Protection Committee (QBPC) based in Beijing works with authorities to improve the effectiveness and transparency of IP policy and legislation httpwwwqbpcorgcn

y The European Union (EU) Chamber of Commerce in China (EUCCC) helps and supports contacts between businesses based in EU member states and China httpwwweuropeanchambercomcnenabout-theshychamber

Concept House Cardiff Road Newport NP10 8QQ

Tel 0300 300 2000 Fax 01633 817 777

wwwgovukipo

For copies in alternative formats please contact our Information Centre

When you no longer need this booklet please recycle it

copy Crown copyright 2013

This document is free for re-use under the terms of the Open Government Licence

Images within this document are licensed by Ingram Image

Published March 2013 DPS-002394

Page 4: Intellectual Property Rights in China · Intellectual property rights in China Intellectual Property Rights in China If you plan to do business in China, or if you are already trading

Treaties and reciprocal agreements

China is also a signatory to the following international IP agreements

y the Paris Convention - under this any person from a signatory state can apply for a patent or trade mark in any other signatory state and will be given the same enforcement rights and status as a national of that country would be

y the Berne Convention - under this each member state recognises the copyright of authors from other member states in the same way as the copyright of its own nationals

y the Madrid Protocol - this is a central system for obtaining a lsquobundlersquo of national trade mark registrations in different jurisdictions through a single application

y the Patent Cooperation Treaty - this works in much the same way as the Madrid Protocol but for patent applications

China is not a signatory to the Hague Agreement which allows the protection of designs in multiple countries through a single filing

Intellectual property rights - systems in China

China has been a member of the World Trade Organisation (WTO) since 2001 This requires member nations to establish intellectual property (IP) laws whose effect is in line with minimum standards As a result there should be few major differences between Chinarsquos laws and those of other developed countries

Copyright

China is a signatory to the Berne Convention on copyright Copyright legislation is based on Chinarsquos 1990 Copyright Law amended in 2001 and the Copyright Implementing Regulations of 2002

There is no requirement to register copyright in China However it is advisable to register your copyright so that you can prove ownership in any dispute or court case

Registration is made with the National Copyright Administration the authority responsible for the administration and enforcement of copyright and related issues in China

Patents utility models and design rights

Chinarsquos Patent Law deals with the protection of rights over technological inventions as in the UK but it also covers utility models and designs (also known as lsquodesign patentsrsquo) Invention patents give protection for a maximum of 20 years utility models for ten and each is subject to the payment of annual fees

It may be a good idea to apply to register a product as a utility model if your invention patent is not granted

4

Chinese patent law operates under the lsquofirst to filersquo principle - that is if two people apply for a patent on an identical invention the first one to file the application will be awarded the patent

Intellectual Property Rights in China

Designs are covered by the Chinese Patent Law The lawrsquos design rights provisions are similar to those for utility models with protection for a maximum of ten years

Trade marks

The Chinese trade mark system operates in a similar way to the UKrsquos giving protection for designs symbols colours or other devices used to identify a businessrsquo products or services

Registration by foreign businesses under the Madrid Protocol takes about 18 months while a direct registration using the Chinese domestic system will usually take between two and a half and three and a half years - and in some cases up to four years

A trade mark is valid for ten years after which it may be renewed indefinitely for further ten-year periods

Customs recordal

A trade mark owner may register - or lsquomake a recordal ofrsquo - their trade mark with Chinese Customs This allows the local Customs offices to check and intercept infringing goods being imported or exported either at their own initiative or following an alert by the rights owner Applying for a recordal is generally done through a lawyer or local attorney and costs about pound50 for the official fee plus a lawyerrsquos fee

Registering and enforcing intellectual property rights in China

To enjoy most types of intellectual property (IP) rights in China you should register them

For patents (including inventions utility models and industrial designs) individual registrations must be made in China But for rights other than industrial designs you can apply under the terms of the Patent Cooperation Treaty which is usually easier and quicker

For trade marks you can either register within China or use the Madrid Protocol to gain unitary rights under national or Community Trade Mark registration systems In the case of well-known brands there is protection under the Anti-Unfair Competition Law - even if unregistered - but this is a complex area of law

For copyright no registration is required as your rights are protected automatically - but registering your copyright with the State Copyright Bureau may help you prove ownership in the case of a dispute Registration can cost up to RMB 1000 depending on the type of work being registered and takes around one month You will need to provide proof of identity and supporting documentation as well as completing the relevant application forms

lsquoPriority rightsrsquo under the Paris Convention can help in the local registration of trade marks designs and patents by allowing rights previously registered elsewhere to become effective in China if filed within a time limit

Some UK patent and trade mark attorneys can cover China However foreign law companies are not allowed to practice Chinese law directly - they can only do so by lsquoentrustingrsquo Chinese law firms

5

Enforcing IP rights in China

The main options for enforcing your IP rights in China include administrative action customs seizure and civil litigation while the State may prosecute offenders under the criminal law

Before involving the authorities it may save money and effort to start by sending a lawyerrsquos lsquocease and desistrsquo letter to an infringer threatening action

You should also bear in mind that negotiation and mediation are very much a part of the Chinese business psyche Many IP disputes are solved through dispute resolution either before or after going to court

The usual choice for enforcing IP rights in China is between administrative action and civil litigation

y Administrative action - the first step is to file a complaint with the local office of the appropriate administrative organisation Trade mark and counterfeiting cases are often straightforward especially where the infringement itself is unambiguous For those involving patents and copyrights however the administrative authoritiesrsquo enforcement powers are less clear-cut You will also need to collect evidence in order to trigger a raid

y Civil litigation - an action may be started in the IP Tribunals There are several advantages to this including the deterrent effect of a high-profile court case and the potential for the award of damages However civil cases usually mean a longer timescale (generally a maximum of 12 months) and greater bureaucracy

The customs system in China is unusual for its ability to intercept fakes on export as well as import China Customs relies on the intelligence it receives about illegal shipments You can help them by passing on the names of known counterfeiters routes and the details of genuine goods

Self-help considerations

There are various things you can do to make it harder in general for infringers to copy your product For example you could

y Think about the design of your product and how easy it would be for somebody to reproduce it without seeing your original designs

y When you hire staff have effective IP-related clauses in employment contracts Also make sure you educate your employees on IP rights and protection

y Have sound physical protection and destruction methods for documents drawings tooling samples machinery etc

y Make sure there are no lsquoleakagesrsquo of packaging that might be used by counterfeiters to pass off fake product

y Check production over-runs to make sure that genuine product is not being sold under a different name

6

Potential problems faced in China and how to deal with them

Intellectual Property Rights in China

Chinarsquos rapid economic development leading to its accession to the World Trade Organisation in 2001 has been the cause for major reforms in its intellectual property (IP) laws China has introduced legislation covering every aspect of the protection of IP Most Western lawyers find the resulting body of law comprehensive systematic and familiar

There is a difference between having adequate laws and achieving their effective enforcement Most believe the Chinese authorities are trying to improve matters and some experts are convinced that real progress is being made

The sheer scale of Chinarsquos growth as its economy expands vigorously (around 10 per cent a year) creates problems as well as advantages Illegal economic activities like counterfeiting and other forms of IP infringement have been a familiar repercussion of many nationsrsquo economic development In Chinarsquos case changes have been particularly rapid which has caused some real problems in IP enforcement

Avoiding problems

The most important way to avoid problems when defending IP rights in China is to be prepared To make sure that you can anticipate any potential issues you should

y take advice from Chinese IP rights experts

y consult publications and websites on Chinese IP rights and protection in general

y carry out risk assessment and due diligence checks on any organisations and individuals you deal with

y take professional advice from other experts - eg lawyers local diplomatic posts Chambers of Commerce and the China-Britain Business Council

y talk to other businesses already doing similar business in China

y consult agents distributors and suppliers on how best to safeguard your rights

y check with trade mark or patent attorneys to see whether there have been previous registrations of your own marks or other IP in China

y be aware of the possibility of small-scale infringers

y make sure your contracts are clear and well-drafted and continually monitor their compliance

y stick to familiar business methods - donrsquot be tempted to do things differently because yoursquore trading in a different country

7

Who should take responsibility for your IP protection

You should make sure that everyone in your business takes some responsibility for IP protection Many businesses depend on the integrity of their IP and it can often be one of their most valuable assets So it should be given proper attention by both management and employees as well as other businesses that you have relationships with

It may be sensible to nominate a manager to have particular responsibility for understanding and protecting your IP rights In businesses with legal departments a legally-trained manager would be a good choice

Top tips for IP protection in China

The most important things you can do to protect your IP rights in China are

y stick to your normal business instincts

y do as much as you can to prevent infringements in the first place - prevention is better than the cure

y assess the risks of the market and make preparations

y take self-help measures to protect your IP

y make sure everyone in your business values its IP including you

y register your IP rights

y create good relationships with organisations that can help you

y consider mediation before defensive action

y once beyond mediation civil litigation has a much more potent deterrent effect than administrative enforcement

8

Where to get intellectual property help in China

Intellectual Property Rights in China

Whether yoursquore resident in and doing business in China or trading internationally with the country there are a number of professional organisations that can offer you advice and support

y UK diplomatic posts - there is a British Embassy in Beijing and Consulates-General in Shanghai Guangzhou Chongqing and Hong Kong They cannot intervene with Chinese legal or administrative processes but they may be able to keep a watching brief when cases are brought to Chinese courts or lobby on your behalf if progress is slow httpukinchinafcogovuken

y British Chambers of Commerce (BritCham) operate in Beijing Shanghai Guangzhou Hong Kong Chengdu and Wuhan BritCham organise intellectual property (IP) related events and their members include local UK lawyers as well as businesses with direct experience of IP issues httpwwwbritishchambercncontent britcham-membership

y The China-Britain Business Council (CBBC) offers a wide range of services including cultural awareness training trade missions and incorporation help httpwwwcbbcorg

y The European Commission-run China IPR SME Helpdesk offers free information training and first-line advice about protecting and enforcing IP in China httpwwwchina-iprhelpdeskeu

y The Quality Brands Protection Committee (QBPC) based in Beijing works with authorities to improve the effectiveness and transparency of IP policy and legislation httpwwwqbpcorgcn

y The European Union (EU) Chamber of Commerce in China (EUCCC) helps and supports contacts between businesses based in EU member states and China httpwwweuropeanchambercomcnenabout-theshychamber

Concept House Cardiff Road Newport NP10 8QQ

Tel 0300 300 2000 Fax 01633 817 777

wwwgovukipo

For copies in alternative formats please contact our Information Centre

When you no longer need this booklet please recycle it

copy Crown copyright 2013

This document is free for re-use under the terms of the Open Government Licence

Images within this document are licensed by Ingram Image

Published March 2013 DPS-002394

Page 5: Intellectual Property Rights in China · Intellectual property rights in China Intellectual Property Rights in China If you plan to do business in China, or if you are already trading

Chinese patent law operates under the lsquofirst to filersquo principle - that is if two people apply for a patent on an identical invention the first one to file the application will be awarded the patent

Intellectual Property Rights in China

Designs are covered by the Chinese Patent Law The lawrsquos design rights provisions are similar to those for utility models with protection for a maximum of ten years

Trade marks

The Chinese trade mark system operates in a similar way to the UKrsquos giving protection for designs symbols colours or other devices used to identify a businessrsquo products or services

Registration by foreign businesses under the Madrid Protocol takes about 18 months while a direct registration using the Chinese domestic system will usually take between two and a half and three and a half years - and in some cases up to four years

A trade mark is valid for ten years after which it may be renewed indefinitely for further ten-year periods

Customs recordal

A trade mark owner may register - or lsquomake a recordal ofrsquo - their trade mark with Chinese Customs This allows the local Customs offices to check and intercept infringing goods being imported or exported either at their own initiative or following an alert by the rights owner Applying for a recordal is generally done through a lawyer or local attorney and costs about pound50 for the official fee plus a lawyerrsquos fee

Registering and enforcing intellectual property rights in China

To enjoy most types of intellectual property (IP) rights in China you should register them

For patents (including inventions utility models and industrial designs) individual registrations must be made in China But for rights other than industrial designs you can apply under the terms of the Patent Cooperation Treaty which is usually easier and quicker

For trade marks you can either register within China or use the Madrid Protocol to gain unitary rights under national or Community Trade Mark registration systems In the case of well-known brands there is protection under the Anti-Unfair Competition Law - even if unregistered - but this is a complex area of law

For copyright no registration is required as your rights are protected automatically - but registering your copyright with the State Copyright Bureau may help you prove ownership in the case of a dispute Registration can cost up to RMB 1000 depending on the type of work being registered and takes around one month You will need to provide proof of identity and supporting documentation as well as completing the relevant application forms

lsquoPriority rightsrsquo under the Paris Convention can help in the local registration of trade marks designs and patents by allowing rights previously registered elsewhere to become effective in China if filed within a time limit

Some UK patent and trade mark attorneys can cover China However foreign law companies are not allowed to practice Chinese law directly - they can only do so by lsquoentrustingrsquo Chinese law firms

5

Enforcing IP rights in China

The main options for enforcing your IP rights in China include administrative action customs seizure and civil litigation while the State may prosecute offenders under the criminal law

Before involving the authorities it may save money and effort to start by sending a lawyerrsquos lsquocease and desistrsquo letter to an infringer threatening action

You should also bear in mind that negotiation and mediation are very much a part of the Chinese business psyche Many IP disputes are solved through dispute resolution either before or after going to court

The usual choice for enforcing IP rights in China is between administrative action and civil litigation

y Administrative action - the first step is to file a complaint with the local office of the appropriate administrative organisation Trade mark and counterfeiting cases are often straightforward especially where the infringement itself is unambiguous For those involving patents and copyrights however the administrative authoritiesrsquo enforcement powers are less clear-cut You will also need to collect evidence in order to trigger a raid

y Civil litigation - an action may be started in the IP Tribunals There are several advantages to this including the deterrent effect of a high-profile court case and the potential for the award of damages However civil cases usually mean a longer timescale (generally a maximum of 12 months) and greater bureaucracy

The customs system in China is unusual for its ability to intercept fakes on export as well as import China Customs relies on the intelligence it receives about illegal shipments You can help them by passing on the names of known counterfeiters routes and the details of genuine goods

Self-help considerations

There are various things you can do to make it harder in general for infringers to copy your product For example you could

y Think about the design of your product and how easy it would be for somebody to reproduce it without seeing your original designs

y When you hire staff have effective IP-related clauses in employment contracts Also make sure you educate your employees on IP rights and protection

y Have sound physical protection and destruction methods for documents drawings tooling samples machinery etc

y Make sure there are no lsquoleakagesrsquo of packaging that might be used by counterfeiters to pass off fake product

y Check production over-runs to make sure that genuine product is not being sold under a different name

6

Potential problems faced in China and how to deal with them

Intellectual Property Rights in China

Chinarsquos rapid economic development leading to its accession to the World Trade Organisation in 2001 has been the cause for major reforms in its intellectual property (IP) laws China has introduced legislation covering every aspect of the protection of IP Most Western lawyers find the resulting body of law comprehensive systematic and familiar

There is a difference between having adequate laws and achieving their effective enforcement Most believe the Chinese authorities are trying to improve matters and some experts are convinced that real progress is being made

The sheer scale of Chinarsquos growth as its economy expands vigorously (around 10 per cent a year) creates problems as well as advantages Illegal economic activities like counterfeiting and other forms of IP infringement have been a familiar repercussion of many nationsrsquo economic development In Chinarsquos case changes have been particularly rapid which has caused some real problems in IP enforcement

Avoiding problems

The most important way to avoid problems when defending IP rights in China is to be prepared To make sure that you can anticipate any potential issues you should

y take advice from Chinese IP rights experts

y consult publications and websites on Chinese IP rights and protection in general

y carry out risk assessment and due diligence checks on any organisations and individuals you deal with

y take professional advice from other experts - eg lawyers local diplomatic posts Chambers of Commerce and the China-Britain Business Council

y talk to other businesses already doing similar business in China

y consult agents distributors and suppliers on how best to safeguard your rights

y check with trade mark or patent attorneys to see whether there have been previous registrations of your own marks or other IP in China

y be aware of the possibility of small-scale infringers

y make sure your contracts are clear and well-drafted and continually monitor their compliance

y stick to familiar business methods - donrsquot be tempted to do things differently because yoursquore trading in a different country

7

Who should take responsibility for your IP protection

You should make sure that everyone in your business takes some responsibility for IP protection Many businesses depend on the integrity of their IP and it can often be one of their most valuable assets So it should be given proper attention by both management and employees as well as other businesses that you have relationships with

It may be sensible to nominate a manager to have particular responsibility for understanding and protecting your IP rights In businesses with legal departments a legally-trained manager would be a good choice

Top tips for IP protection in China

The most important things you can do to protect your IP rights in China are

y stick to your normal business instincts

y do as much as you can to prevent infringements in the first place - prevention is better than the cure

y assess the risks of the market and make preparations

y take self-help measures to protect your IP

y make sure everyone in your business values its IP including you

y register your IP rights

y create good relationships with organisations that can help you

y consider mediation before defensive action

y once beyond mediation civil litigation has a much more potent deterrent effect than administrative enforcement

8

Where to get intellectual property help in China

Intellectual Property Rights in China

Whether yoursquore resident in and doing business in China or trading internationally with the country there are a number of professional organisations that can offer you advice and support

y UK diplomatic posts - there is a British Embassy in Beijing and Consulates-General in Shanghai Guangzhou Chongqing and Hong Kong They cannot intervene with Chinese legal or administrative processes but they may be able to keep a watching brief when cases are brought to Chinese courts or lobby on your behalf if progress is slow httpukinchinafcogovuken

y British Chambers of Commerce (BritCham) operate in Beijing Shanghai Guangzhou Hong Kong Chengdu and Wuhan BritCham organise intellectual property (IP) related events and their members include local UK lawyers as well as businesses with direct experience of IP issues httpwwwbritishchambercncontent britcham-membership

y The China-Britain Business Council (CBBC) offers a wide range of services including cultural awareness training trade missions and incorporation help httpwwwcbbcorg

y The European Commission-run China IPR SME Helpdesk offers free information training and first-line advice about protecting and enforcing IP in China httpwwwchina-iprhelpdeskeu

y The Quality Brands Protection Committee (QBPC) based in Beijing works with authorities to improve the effectiveness and transparency of IP policy and legislation httpwwwqbpcorgcn

y The European Union (EU) Chamber of Commerce in China (EUCCC) helps and supports contacts between businesses based in EU member states and China httpwwweuropeanchambercomcnenabout-theshychamber

Concept House Cardiff Road Newport NP10 8QQ

Tel 0300 300 2000 Fax 01633 817 777

wwwgovukipo

For copies in alternative formats please contact our Information Centre

When you no longer need this booklet please recycle it

copy Crown copyright 2013

This document is free for re-use under the terms of the Open Government Licence

Images within this document are licensed by Ingram Image

Published March 2013 DPS-002394

Page 6: Intellectual Property Rights in China · Intellectual property rights in China Intellectual Property Rights in China If you plan to do business in China, or if you are already trading

Enforcing IP rights in China

The main options for enforcing your IP rights in China include administrative action customs seizure and civil litigation while the State may prosecute offenders under the criminal law

Before involving the authorities it may save money and effort to start by sending a lawyerrsquos lsquocease and desistrsquo letter to an infringer threatening action

You should also bear in mind that negotiation and mediation are very much a part of the Chinese business psyche Many IP disputes are solved through dispute resolution either before or after going to court

The usual choice for enforcing IP rights in China is between administrative action and civil litigation

y Administrative action - the first step is to file a complaint with the local office of the appropriate administrative organisation Trade mark and counterfeiting cases are often straightforward especially where the infringement itself is unambiguous For those involving patents and copyrights however the administrative authoritiesrsquo enforcement powers are less clear-cut You will also need to collect evidence in order to trigger a raid

y Civil litigation - an action may be started in the IP Tribunals There are several advantages to this including the deterrent effect of a high-profile court case and the potential for the award of damages However civil cases usually mean a longer timescale (generally a maximum of 12 months) and greater bureaucracy

The customs system in China is unusual for its ability to intercept fakes on export as well as import China Customs relies on the intelligence it receives about illegal shipments You can help them by passing on the names of known counterfeiters routes and the details of genuine goods

Self-help considerations

There are various things you can do to make it harder in general for infringers to copy your product For example you could

y Think about the design of your product and how easy it would be for somebody to reproduce it without seeing your original designs

y When you hire staff have effective IP-related clauses in employment contracts Also make sure you educate your employees on IP rights and protection

y Have sound physical protection and destruction methods for documents drawings tooling samples machinery etc

y Make sure there are no lsquoleakagesrsquo of packaging that might be used by counterfeiters to pass off fake product

y Check production over-runs to make sure that genuine product is not being sold under a different name

6

Potential problems faced in China and how to deal with them

Intellectual Property Rights in China

Chinarsquos rapid economic development leading to its accession to the World Trade Organisation in 2001 has been the cause for major reforms in its intellectual property (IP) laws China has introduced legislation covering every aspect of the protection of IP Most Western lawyers find the resulting body of law comprehensive systematic and familiar

There is a difference between having adequate laws and achieving their effective enforcement Most believe the Chinese authorities are trying to improve matters and some experts are convinced that real progress is being made

The sheer scale of Chinarsquos growth as its economy expands vigorously (around 10 per cent a year) creates problems as well as advantages Illegal economic activities like counterfeiting and other forms of IP infringement have been a familiar repercussion of many nationsrsquo economic development In Chinarsquos case changes have been particularly rapid which has caused some real problems in IP enforcement

Avoiding problems

The most important way to avoid problems when defending IP rights in China is to be prepared To make sure that you can anticipate any potential issues you should

y take advice from Chinese IP rights experts

y consult publications and websites on Chinese IP rights and protection in general

y carry out risk assessment and due diligence checks on any organisations and individuals you deal with

y take professional advice from other experts - eg lawyers local diplomatic posts Chambers of Commerce and the China-Britain Business Council

y talk to other businesses already doing similar business in China

y consult agents distributors and suppliers on how best to safeguard your rights

y check with trade mark or patent attorneys to see whether there have been previous registrations of your own marks or other IP in China

y be aware of the possibility of small-scale infringers

y make sure your contracts are clear and well-drafted and continually monitor their compliance

y stick to familiar business methods - donrsquot be tempted to do things differently because yoursquore trading in a different country

7

Who should take responsibility for your IP protection

You should make sure that everyone in your business takes some responsibility for IP protection Many businesses depend on the integrity of their IP and it can often be one of their most valuable assets So it should be given proper attention by both management and employees as well as other businesses that you have relationships with

It may be sensible to nominate a manager to have particular responsibility for understanding and protecting your IP rights In businesses with legal departments a legally-trained manager would be a good choice

Top tips for IP protection in China

The most important things you can do to protect your IP rights in China are

y stick to your normal business instincts

y do as much as you can to prevent infringements in the first place - prevention is better than the cure

y assess the risks of the market and make preparations

y take self-help measures to protect your IP

y make sure everyone in your business values its IP including you

y register your IP rights

y create good relationships with organisations that can help you

y consider mediation before defensive action

y once beyond mediation civil litigation has a much more potent deterrent effect than administrative enforcement

8

Where to get intellectual property help in China

Intellectual Property Rights in China

Whether yoursquore resident in and doing business in China or trading internationally with the country there are a number of professional organisations that can offer you advice and support

y UK diplomatic posts - there is a British Embassy in Beijing and Consulates-General in Shanghai Guangzhou Chongqing and Hong Kong They cannot intervene with Chinese legal or administrative processes but they may be able to keep a watching brief when cases are brought to Chinese courts or lobby on your behalf if progress is slow httpukinchinafcogovuken

y British Chambers of Commerce (BritCham) operate in Beijing Shanghai Guangzhou Hong Kong Chengdu and Wuhan BritCham organise intellectual property (IP) related events and their members include local UK lawyers as well as businesses with direct experience of IP issues httpwwwbritishchambercncontent britcham-membership

y The China-Britain Business Council (CBBC) offers a wide range of services including cultural awareness training trade missions and incorporation help httpwwwcbbcorg

y The European Commission-run China IPR SME Helpdesk offers free information training and first-line advice about protecting and enforcing IP in China httpwwwchina-iprhelpdeskeu

y The Quality Brands Protection Committee (QBPC) based in Beijing works with authorities to improve the effectiveness and transparency of IP policy and legislation httpwwwqbpcorgcn

y The European Union (EU) Chamber of Commerce in China (EUCCC) helps and supports contacts between businesses based in EU member states and China httpwwweuropeanchambercomcnenabout-theshychamber

Concept House Cardiff Road Newport NP10 8QQ

Tel 0300 300 2000 Fax 01633 817 777

wwwgovukipo

For copies in alternative formats please contact our Information Centre

When you no longer need this booklet please recycle it

copy Crown copyright 2013

This document is free for re-use under the terms of the Open Government Licence

Images within this document are licensed by Ingram Image

Published March 2013 DPS-002394

Page 7: Intellectual Property Rights in China · Intellectual property rights in China Intellectual Property Rights in China If you plan to do business in China, or if you are already trading

Potential problems faced in China and how to deal with them

Intellectual Property Rights in China

Chinarsquos rapid economic development leading to its accession to the World Trade Organisation in 2001 has been the cause for major reforms in its intellectual property (IP) laws China has introduced legislation covering every aspect of the protection of IP Most Western lawyers find the resulting body of law comprehensive systematic and familiar

There is a difference between having adequate laws and achieving their effective enforcement Most believe the Chinese authorities are trying to improve matters and some experts are convinced that real progress is being made

The sheer scale of Chinarsquos growth as its economy expands vigorously (around 10 per cent a year) creates problems as well as advantages Illegal economic activities like counterfeiting and other forms of IP infringement have been a familiar repercussion of many nationsrsquo economic development In Chinarsquos case changes have been particularly rapid which has caused some real problems in IP enforcement

Avoiding problems

The most important way to avoid problems when defending IP rights in China is to be prepared To make sure that you can anticipate any potential issues you should

y take advice from Chinese IP rights experts

y consult publications and websites on Chinese IP rights and protection in general

y carry out risk assessment and due diligence checks on any organisations and individuals you deal with

y take professional advice from other experts - eg lawyers local diplomatic posts Chambers of Commerce and the China-Britain Business Council

y talk to other businesses already doing similar business in China

y consult agents distributors and suppliers on how best to safeguard your rights

y check with trade mark or patent attorneys to see whether there have been previous registrations of your own marks or other IP in China

y be aware of the possibility of small-scale infringers

y make sure your contracts are clear and well-drafted and continually monitor their compliance

y stick to familiar business methods - donrsquot be tempted to do things differently because yoursquore trading in a different country

7

Who should take responsibility for your IP protection

You should make sure that everyone in your business takes some responsibility for IP protection Many businesses depend on the integrity of their IP and it can often be one of their most valuable assets So it should be given proper attention by both management and employees as well as other businesses that you have relationships with

It may be sensible to nominate a manager to have particular responsibility for understanding and protecting your IP rights In businesses with legal departments a legally-trained manager would be a good choice

Top tips for IP protection in China

The most important things you can do to protect your IP rights in China are

y stick to your normal business instincts

y do as much as you can to prevent infringements in the first place - prevention is better than the cure

y assess the risks of the market and make preparations

y take self-help measures to protect your IP

y make sure everyone in your business values its IP including you

y register your IP rights

y create good relationships with organisations that can help you

y consider mediation before defensive action

y once beyond mediation civil litigation has a much more potent deterrent effect than administrative enforcement

8

Where to get intellectual property help in China

Intellectual Property Rights in China

Whether yoursquore resident in and doing business in China or trading internationally with the country there are a number of professional organisations that can offer you advice and support

y UK diplomatic posts - there is a British Embassy in Beijing and Consulates-General in Shanghai Guangzhou Chongqing and Hong Kong They cannot intervene with Chinese legal or administrative processes but they may be able to keep a watching brief when cases are brought to Chinese courts or lobby on your behalf if progress is slow httpukinchinafcogovuken

y British Chambers of Commerce (BritCham) operate in Beijing Shanghai Guangzhou Hong Kong Chengdu and Wuhan BritCham organise intellectual property (IP) related events and their members include local UK lawyers as well as businesses with direct experience of IP issues httpwwwbritishchambercncontent britcham-membership

y The China-Britain Business Council (CBBC) offers a wide range of services including cultural awareness training trade missions and incorporation help httpwwwcbbcorg

y The European Commission-run China IPR SME Helpdesk offers free information training and first-line advice about protecting and enforcing IP in China httpwwwchina-iprhelpdeskeu

y The Quality Brands Protection Committee (QBPC) based in Beijing works with authorities to improve the effectiveness and transparency of IP policy and legislation httpwwwqbpcorgcn

y The European Union (EU) Chamber of Commerce in China (EUCCC) helps and supports contacts between businesses based in EU member states and China httpwwweuropeanchambercomcnenabout-theshychamber

Concept House Cardiff Road Newport NP10 8QQ

Tel 0300 300 2000 Fax 01633 817 777

wwwgovukipo

For copies in alternative formats please contact our Information Centre

When you no longer need this booklet please recycle it

copy Crown copyright 2013

This document is free for re-use under the terms of the Open Government Licence

Images within this document are licensed by Ingram Image

Published March 2013 DPS-002394

Page 8: Intellectual Property Rights in China · Intellectual property rights in China Intellectual Property Rights in China If you plan to do business in China, or if you are already trading

Who should take responsibility for your IP protection

You should make sure that everyone in your business takes some responsibility for IP protection Many businesses depend on the integrity of their IP and it can often be one of their most valuable assets So it should be given proper attention by both management and employees as well as other businesses that you have relationships with

It may be sensible to nominate a manager to have particular responsibility for understanding and protecting your IP rights In businesses with legal departments a legally-trained manager would be a good choice

Top tips for IP protection in China

The most important things you can do to protect your IP rights in China are

y stick to your normal business instincts

y do as much as you can to prevent infringements in the first place - prevention is better than the cure

y assess the risks of the market and make preparations

y take self-help measures to protect your IP

y make sure everyone in your business values its IP including you

y register your IP rights

y create good relationships with organisations that can help you

y consider mediation before defensive action

y once beyond mediation civil litigation has a much more potent deterrent effect than administrative enforcement

8

Where to get intellectual property help in China

Intellectual Property Rights in China

Whether yoursquore resident in and doing business in China or trading internationally with the country there are a number of professional organisations that can offer you advice and support

y UK diplomatic posts - there is a British Embassy in Beijing and Consulates-General in Shanghai Guangzhou Chongqing and Hong Kong They cannot intervene with Chinese legal or administrative processes but they may be able to keep a watching brief when cases are brought to Chinese courts or lobby on your behalf if progress is slow httpukinchinafcogovuken

y British Chambers of Commerce (BritCham) operate in Beijing Shanghai Guangzhou Hong Kong Chengdu and Wuhan BritCham organise intellectual property (IP) related events and their members include local UK lawyers as well as businesses with direct experience of IP issues httpwwwbritishchambercncontent britcham-membership

y The China-Britain Business Council (CBBC) offers a wide range of services including cultural awareness training trade missions and incorporation help httpwwwcbbcorg

y The European Commission-run China IPR SME Helpdesk offers free information training and first-line advice about protecting and enforcing IP in China httpwwwchina-iprhelpdeskeu

y The Quality Brands Protection Committee (QBPC) based in Beijing works with authorities to improve the effectiveness and transparency of IP policy and legislation httpwwwqbpcorgcn

y The European Union (EU) Chamber of Commerce in China (EUCCC) helps and supports contacts between businesses based in EU member states and China httpwwweuropeanchambercomcnenabout-theshychamber

Concept House Cardiff Road Newport NP10 8QQ

Tel 0300 300 2000 Fax 01633 817 777

wwwgovukipo

For copies in alternative formats please contact our Information Centre

When you no longer need this booklet please recycle it

copy Crown copyright 2013

This document is free for re-use under the terms of the Open Government Licence

Images within this document are licensed by Ingram Image

Published March 2013 DPS-002394

Page 9: Intellectual Property Rights in China · Intellectual property rights in China Intellectual Property Rights in China If you plan to do business in China, or if you are already trading

Where to get intellectual property help in China

Intellectual Property Rights in China

Whether yoursquore resident in and doing business in China or trading internationally with the country there are a number of professional organisations that can offer you advice and support

y UK diplomatic posts - there is a British Embassy in Beijing and Consulates-General in Shanghai Guangzhou Chongqing and Hong Kong They cannot intervene with Chinese legal or administrative processes but they may be able to keep a watching brief when cases are brought to Chinese courts or lobby on your behalf if progress is slow httpukinchinafcogovuken

y British Chambers of Commerce (BritCham) operate in Beijing Shanghai Guangzhou Hong Kong Chengdu and Wuhan BritCham organise intellectual property (IP) related events and their members include local UK lawyers as well as businesses with direct experience of IP issues httpwwwbritishchambercncontent britcham-membership

y The China-Britain Business Council (CBBC) offers a wide range of services including cultural awareness training trade missions and incorporation help httpwwwcbbcorg

y The European Commission-run China IPR SME Helpdesk offers free information training and first-line advice about protecting and enforcing IP in China httpwwwchina-iprhelpdeskeu

y The Quality Brands Protection Committee (QBPC) based in Beijing works with authorities to improve the effectiveness and transparency of IP policy and legislation httpwwwqbpcorgcn

y The European Union (EU) Chamber of Commerce in China (EUCCC) helps and supports contacts between businesses based in EU member states and China httpwwweuropeanchambercomcnenabout-theshychamber

Concept House Cardiff Road Newport NP10 8QQ

Tel 0300 300 2000 Fax 01633 817 777

wwwgovukipo

For copies in alternative formats please contact our Information Centre

When you no longer need this booklet please recycle it

copy Crown copyright 2013

This document is free for re-use under the terms of the Open Government Licence

Images within this document are licensed by Ingram Image

Published March 2013 DPS-002394

Page 10: Intellectual Property Rights in China · Intellectual property rights in China Intellectual Property Rights in China If you plan to do business in China, or if you are already trading

Concept House Cardiff Road Newport NP10 8QQ

Tel 0300 300 2000 Fax 01633 817 777

wwwgovukipo

For copies in alternative formats please contact our Information Centre

When you no longer need this booklet please recycle it

copy Crown copyright 2013

This document is free for re-use under the terms of the Open Government Licence

Images within this document are licensed by Ingram Image

Published March 2013 DPS-002394