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China IPR SME Helpdesk Protecting your IPR in China
& How the Helpdesk can Assist you
Beijing, 28 April 2014
Valentina Salmoiraghi, IP Expert
1) The China IPR SME Helpdesk’s Services
2) Protecting your IPR in China
1) The China IPR SME Helpdesk’s Services
The China IPR SME Helpdesk
Raising awareness and preparing SMEs for IPR issues in China: “know before you go”
Information and services free of charge for SMEs
Business-focused and practical first-line advice
Delivering IPR business tools and self-help solutions (guides, E-learning)
Enabling SMEs to make informed IPR decisions (protection, enforcement, IP management)
Enquiry Helpline
IP Guides & Newsletters
E-learning & Business Tools
Training Workshops & Live Webinars
Website & Blog
5
Snapshot: Helpdesk Services
IPR Guides and Newsletters
• Guides and training materials addressing China IPR issues:
– Both IP Specific incl. patents, trademarks, copyrights and Industry specific incl. creative, textiles, medical devices, automotive
– Business focus incl. IP as a business asset, how to find the right lawyer
– New series of practical ‘How to’ guides
• IPR Updates and developments
– Newsletters, articles, content provision
Training workshops and webinars • Workshops across Europe and in China
• Addressing general IPR and industry specific IPR matters
• Tailored to the needs of SME audience
• Outreach to regions: non capital cities, SMEs clusters
• Conducted in local language where possible
• Organised in partnership with SME intermediaries
• Webinars: convenient to join from own office or home
Website and Blog
• Multi-lingual comprehensive information hub
• Easy access for all EU SMEs to all Helpdesk services and materials including: – Helpline
– Helpdesk guides
– E-learning modules
– Event information
• Helpdesk blog – Your IP Insider
www.china-iprhelpdesk.eu www.youripinsider.eu
Enquiry Helpline
• Available for EU SMEs and SME intermediaries
• First-line advice on China IPR matters
• Confidential
• Delivered by China IPR specialists
• Accessible via E-mail, telephone,
• face-to-face
• IPR one on one consultations
Typical Enquiries
“How long does it take to resolve a trade mark dispute case? How much does it cost?
“I have a trade mark registered in Europe. Is it valid in China?”
“What actions can be taken in case of copyright infringement?”
“How do we register our patent in China?”
Some of our partners:
Online Portal www.china-iprhelpdesk.eu
Download / view for free:
• Practical IPR guides
• E-learning modules
• Case study catalogue
• FAQs
• Latest blog posts
• Helpdesk videos
12
Social Media: Stay Connected
Fan page: 'China IPR SME Helpdesk'
@iprchina
@iprchina
www.YourIPinsider.eu
Youtube / Tudou channel: IPRChina
2) Protecting your IPR in China
China’s current IPR legal framework:
China nowadays has a comprehensive system of IP related laws, that generally match international standards
Basic legal framework:
Copyright
Invention Patent
Utility Model
Design Patent
Trade mark
IP Laws:
Trademark Law
Patent Law
Copyright Law
Unfair Competition Law
(trade secrets)
China IP
• Acquisition of rights
First-to-file
Territorial
NB: protect your business by filing your IP as soon as you plan to enter the Chinese market!
• Enforcement of rights
administrative
civil
criminal
IP Action Plan for China
• Implement proper protection and overall strategy in advance and use all available resources
• Timely register relevant and core IP in China
• Select the right partners and sign with them contracts including specific IP clauses (e.g. distribution agreements, import/export, Non-disclosure Agreements )
• Always be proactive and monitor the market
• Plan budget for the enforcement of your core IP
What IP is involved in the F&B and cosmetic industries?
• Marketing branding creates Trade Marks
• Specific packaging of the products create Designs
• Content, documents, website create Copyrights
• Confidential recipes, know-how, systems create Trade Secrets
• Special technologies may create Patents
• Products with certain qualities are protected by Geographical Indications or Collective Trade Marks
• Procedures and machineries to process food may involve Patents, Know-how, Technology Transfer
Acquisition of Rights
• Trademark Office (CTMO)
Domestic filing at the China Trademark Office
o 12 months examination/ 9 months after May 1st 2014
o Pre-approved + 3 months for oppositions
o Protection from date of final decision(expiration of the 3 months)
International extension (WIPO)
o Based on a foreign national registration
o If no objection from CTMO (one year): registered
Trade marks • Distinctive sign to identify certain goods (or services) to prevent confusion
regarding the origin of products and the dilution of its distinctive quality
• Formal approach, no registration gives in general no protection.
• Foreign applicants need a trade mark agent.
• International or national application; broader specifications versus Chinese certificate.
• Term: 10 years, renewable.
• Duration of application procedure: about 1 year.
• Enforcement through courts or AIC (Administration of Industry and Commerce) – way depends on the specific case and claims.
Don’t forget: Foreign Trade marks and Trade marks in Chinese language are basically different things!
Geographical Indications (GIs) • 3 different definitions of GI provided in China’s legislations:
1) “Geographical Indications” in the Trademark Law
2) “GI products” in the Provisions on the Protection of Geographical Indication Products and
3) “GIs of agricultural products” in the Measures for the Administration of Geographical Indications of Agricultural Products.
• Focus on GIs protection under the Trademark Law as Collective Marks or Certification Marks
• Collective Marks: registered by a group of registrants belonging to a specific consortium of producers
• Certification Marks: identify goods as originating in a region, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin, it is qualified to be registered as certification mark and to certify the origin and a given quality or other characteristic of the goods
Acquisition of Rights
• State Intellectual Property Office (SIPO)
Patent
o new technical solution relating to a product process or improvement: novelty – inventiveness – practical applicability
o national route / PCT
o substantial examination of the technology, 2 to 3 years
Design
o no substantial examination, less than 1 year
o New designs of a product’s shape, pattern, colour or combination thereof (not only the colour). External features and not the result of a technical component, it needs to have an industrial application. Novel and inventive.
Invention patents, (utility models) and design patents • All under the Chinese Patent Law
• Absolute novelty standard for inventions
• Foreign applicants need a patent agent
• Foreign applications: Paris Convention 12/6 months, or Patent Cooperation Treaty (PCT) - (30 months priority term)
• Terms: 20/10 years, subject to annuity fees
• Duration of application procedure: 3-5/1 years
• Enforcement through courts or IPO (Intellectual Property Office) – way depends on the specific case and claims
Be careful with Chinese translations of the Patent applications!
Acquisition of Rights
Copyright
Automatic right – no formal
requirement of registration however registration is strongly recommended for enforcement in China
Voluntary registration with the Copyright Protection Centre, Local Copyright Bureau
o 30 days registration
o cost-effective
Trade Secrets
• Technology or know-how that cannot be patented can be protected by keeping it secret
• In certain situations a Trade Secret is even preferable to a Patent: the know-how can be more valuable when kept secret
• Protection under Unfair competition for Trade Secrets
Definition: technical information not known to public; with economic value; kept secret by the owner
Enforcement
Principal characteristic: double track system
Public enforcement (administrative)
o before specialized administrations
o fast, cheap, reasonably efficient
o confiscation, destruction, fine but no damages compensation
Private enforcement
o before the People’s Courts
o advisable for more difficult cases
o time consuming and more expensive
o compensation awarded
Special administrative ways to protect your IP:
No special rights granted, but advantages when enforcing
• Recordal of IPR with the Chinese customs (GAC)
• Recordal with Quality & Technical Supervision Bureau (QTSB)
• Record a claim with the Fair Trade Bureau
Tips to protect IP in China for all businesses
• Register your IP in China
• Due diligence
• Monitor the market
Clean up Internet sites
Attend trade fairs
• Stop shipment at borders
• Do raids!
• Don’t fear the Chinese Courts
• Work together!
For more information about our services and how the China IPR SME Helpdesk can add value to your organisation, please contact us:
Telephone: +86 (10) 64620892 | Online: www.china-iprhelpdesk.eu
Email: [email protected] | Blog: www.youripinsider.eu
@iprchina
Fan page: ‘ China IPR SME Helpdesk'
'China IPR'
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