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Differences between IP Protection in China vs. Europe
Alessandra Chies 3 September 2014
Welcome to the webinar
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Webinar interaction tools
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Snapshot: Helpdesk services
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Today’s speaker
Name: Alessandra Chies Occupation: Partner Firm: Ferrante Intellectual Property Location: Beijing, China Email: [email protected] Speaker’s Bio: Alessandra is a partner of FERRANTE INTELLECTUAL PROPERTY. Alessandra has advised and assisted European companies from a wide range of industries on various aspects of IP prosecutions and enforcement in China, evaluating intellectual property rights portfolios and providing guidance on strategies. She also collaborated with the EU-China Project for the Enforcement of IPR (IPR2) where she served as co-editor of IP related publications.
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Agenda
1. Similarities and differences between Trade marks, Designs, Invention Patents, Utility Model, Copyright, Trade Secret and Geographical Indication protection in China and the European Union 2. Case studies 3. Some core considerations on Customs protection and court proceedings 4. Q&A
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Poll 1
Question: Do you have business dealings in China?
A. Yes, I do.
B. No, I do not.
C. No, but I plan to.
D. Not anymore.
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China and EU IPR protection
China and European Union are both members of WIPO and parties of: • Paris Convention • Berne Convention • TRIPS There are numerous similarities in the systems but also some differences in the legislation and procedures between China and the EU Note: Some legislations and procedures also differ among European Union Member States.
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One important aspect in common
IPRs are territorial rights: they are only protected in the territory/jurisdiction where they are registered Registration of your IPR is the core starting point.
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Always remember
• Seek advice in advance and act promptly when (or even before) entering the market
• Making decisions based on the way in which IPRs are registered/enforced
in your country can cause serious harm to your business
• Even if you have dealt with similar situations in China before, laws may have changed.
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Trademark protection: Similarities EU-China • Registration is valid for 10 years from the date of filing (like for CTM) and
can be renewed indefinitely for further periods of 10 years
• Possibility to register non conventional trademarks (i.e. sound marks, 3D trademarks, color trademarks)
• Multiclass application introduced with the Amended Trademark Law of PRC (2014)
• Both EU and China use the Nice Classification (the system for classifying goods and services for the purpose of registering trademarks).
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Trademark protection: Differences EU-China • Protection starts from the registration date in China
• China adopts the first to file principle (better not to rely on prior use)
• Foreign companies not having a registered office in China must use a local
attorney for filing a trademark application • For enforcing an international trademark extended to China, a further
document is required: the confirmation certificate.
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Trademark protection: Differences EU-China
• In China, trademarks shall be used exactly in the way they have been
registered
• The trademark can be cancelled if it is not used for 3 years from registration date in China (5 years for CTM)
• Chinese translation/transliteration of the trademark shall be registered as
well
• For Chinese trademark applications it is very important to carefully list all goods/services to be protected by the trademark according to the Chinese translation of the Nice Classification.
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For Chinese trademark applications it is very important to carefully list all goods/services to be protected by the trademark Both systems use the Nice Classification BUT; Indicating just the class heading may leave loopholes in your protection Some differences in the list of goods/ services in China exist (i.e. Class 35: retail service and wholesale, cannot be listed in China )
An important difference: carefully list goods and services in the application
Trademarks – Case study 1 Nice Classification’s subclasses issues • Company “A” registered the international trademark “XW” covering the
headings of Class 25 (as often happens), namely “clothing, footwear, headgear”, and subsequently extended protection of this trademark to China.
• The trademark was registered for those goods. • Company “B” lodged an application in China for the same “XW” trademark
covering the goods “hosiery, gloves, scarfs, girdle” (which are also included in Class 25).
• Company B trademark was preliminary approved for registration: the opposition was non successful because the two trademarks cover different goods (even though they are within the same class).
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Trademarks – Case study 2 Importance of registering a Chinese transliteration / translation • In China, a large number of the population do not read a foreign alphabet.
If there is no Chinese equivalent of your trademark, the consumers will adopt one for you but it may not be the way in which you like your brand to be recognised!
• For example, Ralph Lauren is known as the three legged horse “San Jiao Ma”
• Many foreign brands are (almost) only recognised with their Chinese Trademark i.e. McDonald - Mai Dang Lao’ (麦当劳)
• If a third party registers your Chinese translation/transliteration it may harm your brand.
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Copyright protection in China: some core aspects • Copyright is protected from the
date of creation in EU and China • Advisable to record the copyright
in China (this is not a compulsory requirement)
• Certificate of Copyright is a prima facie evidence of ownership
• Note: Always keep records of authorship, agreements, date/location of first publishing the copyrighted work.
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Design protection Similarities EU-China • Absolute novelty standard applies in China as well
• Possibility to claim the priority date of first application (6 months)
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Design protection Differences EU-China • Designs falls within the Patent Law and are considered a type of patent in
China • In China, designs need to be registered to be protected (in EU, designs
can be protected for 3 years without registration) • In China, registered designs are protected for 10 years (in EU, Registered
designs are protected for 25 years) • In China, the design needs to be renewed each year (in EU, is renewed for
period of 5 years) • In China, there is no substantive examination for granting a design right.
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Designs- Case study
The test for Design infringement is whether an “ordinary consumer” (not an expert) takes all the design’s features into account for the determination of its overall visual impression and finds the two designs confusingly similar. The Chinese courts found that Great Wall did not infringe FIAT design, due to minor differences that outweighed the general similarities (FIAT won in Europe). Similar conclusions for the HONDA CR-V vs Laibao 5R-V.
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Poll 2
Question: Have you registered your IP in China? If yes, which one?
A. Trade mark
B. Patent
C. Copyright
D. Other
E. I have not registered my IP
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Invention patent Similarities EU-China • First to file principle and absolute novelty applies to invention patents
(absolute novelty only applies to patents filed on or after 1 October 2009) • Possibility to claim the priority date of first application (12 months) • Registered invention patents are protected for 20 years • Both jurisdictions accept international patent applications under the
Patent Cooperation Treaty (PCT) • Amendments to extend the scope of the original disclosure are not
allowed.
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Invention patents in China; important notes
• Patent applications in China are processed in Chinese
• If the patent document is originally in a foreign language, an accurate translation (by a technical expert) in Chinese is of outmost importance
• Foreign companies not having a registered office in China must use a local patent attorney for filing of a patent.
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Invention patent in China; important notes
• For invention patent infringements, most often lawsuits are the only viable option
• First tier cities’ Courts (ie Beijing, Shanghai) are more reliable forums for patent infringement action (due to higher expertise of judges)
• Patent infringement is not considered a crime and cannot be pursued under criminal procedure (patent passing off can be criminally prosecuted).
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Utility model protection: core aspects
• Utility models are widely used in China especially because there is no substantive examination in the procedure
• Utility models are not available in all European Union countries.
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Geographical indications (GI): core aspects • China currently has three GI protection systems
• Foreign Geographical Indication can be registered as collective or
certification trademarks.
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Trade secrets protection: core aspects CHINA • Trade secrets are protected under civil, criminal and administrative law • Courts rely primarily on documentary evidence, and do not often allow
witness testimonies and expert opinions in trade secrets cases EUROPE • Trade secrets are protected under civil and criminal law at a national level • The discovery procedure allows one party to request documents and
other evidence from other parties For trade secrets protection, prevention is vital (i.e. training of employees)
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Different Authorities Involved in registration procedures CHINA
• CTMO = China Trade Mark Office • SIPO = State Intellectual Property Office • NCAC = National Copyright Administration of China • AQSIQ = Administration for Quality Supervision Inspection and
Quarantine
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SIPO
CTMO
AQSIQ
NCAC
Customs Border protection: main differences
CHINA • China Customs supervise both importation and exportation
• Right owners must record registered China IPRs (not only trade marks but
also patent, designs etc. can be recorded) with General Administration of Customs to activate proactive Customs enforcement
EUROPE • No formal registration/recordation of rights with Customs is required.
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Customs – Case study
Company “A” owns a community trademark covering goods in class 25, but did not register the trademark in China. Company “B” registered the same trademark in China and also recorded the trademark with China Customs. Company “A” decided not to sell goods branded by this trademark in China to avoid trademark infringement, but produced the products/part of the product (bearing the trademark) in China. The shipment of these products was seized at Customs by Company “B”, fines imposed on Company “A” (and Criminal action may be initiated).
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Courts proceedings: some points to highlight
CHINA • All foreign evidence must be notarized and legalized
• The plaintiff (IP Holder) shall collect and present evidence to the court;
courts hardly order infringers to produce evidence
• Preliminary injunctions and Evidence Preservation measures are rarely granted
• First instance judgments can be appealed and are not immediately enforceable.
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Take-away Messages
Always register your IPR in China
Always consult a PRC Lawyer to learn how to actually register and enforce your rights
Do not take decisions based on how the system works in your country
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Q&A
Name: Alessandra Chies
Firm: Ferrante Intellectual Property
Location: Beijing
Email: [email protected]
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Join our upcoming events!
Upcoming Training Events in China: • 10 September, Shanghai: Protecting your Creative Work in China • 16-18 September, Shenyang: China Europa 2014
Upcoming Training Events in Europe: • 18 September, Frankfurt: Internationale Patente und Know How
Upcoming Webinars: • 17 September, Online: New Trade Mark Legislation in China
Click here to access our Event Calendar.
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PLAY the Serious Game
• Interactive training and learning tool • Common business scenarios to
experience doing business, protecting and enforcing IP in China
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Available online at: http://www.chinaiprhelpdesk.eu/en/serious-game/
E-learning modules
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Enforcing your IPR in China!
Dealing with customs in China!
Thank you
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