On the 29th April, Founder of Crayfish.io Ting Zhang held the third session of the ‘China -Let’s Talk Business’ webinar series on the topic of how to protect your IP in China. Ting was joined by guest speaker Luna Zhang who is a senior Lawyer at Kangxin Partners and has been practising for 15 years. Together they looked at intellectual property protection in china: understanding the basics of IP in China, the common issues for newcomers in China and tips for protection from both a trademark point of view, as well as a patent point of view.
Intellectual Property rights provide a creator with the exclusive rights to use their creation for a certain period of time. There are two types of IP rights: copyright and rights related to copyright, and industrial property (trademarks and patents). Due to the lack of international treaty between countries for intellectual property protection, when foreign companies enter China they must be aware that they need to apply for the trademark rights or patent rights again specifically for China. Let’s take a closer look at the two different types of intellectual property you can apply for in China:
When you enter China, before you file a trademark, you must understand the trademark lifecycle. This starts with doing a search before you file for your trademark, ensuring no one has filed an identical trademark registration before you. After your registration is successful you will need to monitor your trademark to protect your own rights, and then renew it every ten years for your brand’s protection.
One of the most common issues for trademark holders in China is trademark squatters. China has a reputation that there are a lot of bad faith filers who register the brand name before you enter into the China market. This is because China works on a first-come-first-served basis. This means that whoever is first to file, they will give the rights to that person, overlooking other elements such as if they are the true, deserving owners of the trademark. When you prepare to enter into China market, whether that is with business operations or selling a product, you need to pay attention to these squatters. If your mark has been rejected, there must be a reason, for example, there are some marks that are similar or identical and so your registration is blocked. In this case, you need to change your mark, or you need to analyse the marks and see if they are in use. Some marks may be registered on certain goals or services which do not affect yours and so you will be able to overcome this.
It is also important to be aware of the infringement. This can happen online and offline, though in the last five years it has tended to be more common online. When you check the infringement of your trademark, you need to combine online and offline leads so that it is easier to find infringers and you can get through comprehensive information about them, like how many products they have infringed and how much revenue they get.
The final issue with trademark filing is Chinese language trademarks. In China, it is important to have a Chinese trademark, because Chinese people master Chinese language more than English. This is a better way to keep your brand in China more relevant and well known.
There are 3 types of patents available in China:
Whereas in Europe, design is treated as a trademark, in China it is treated as a patent. It is important to know which kind of patent you are choosing before you file for it, for example when you want to find a new technical solution for a product or process, you will need an invention patent.
There are some issues that will arise with patent filing in China. Firstly, infringement still occurs. Also, discovery of these infringements is limited; the system requires plaintiffs to build much of their cases on evidence obtained through private investigations efforts. Finally, language is a significant barrier. The application should be filed in Chinese, but there is a lot of technical languages required for patent applications, including very specific descriptions of technology. Some law firms may translate without the technical knowledge and background, and therefore it is important to ensure that your invention and the description of your technology is understood well by the translator and other’s who speak Chinese to help your patent application go smoothly.
As a newcomer in China, you will need to tailor your IP strategy to your needs; different business goals will require different approaches to the protection of your IP. In order to keep safe, finding a local agent or law firm is very important and ensure that the agents are internationally recognised firms in rankings such as WTR, IAM1000 or Chambers and Partners. Finally, it is essential to do thorough preliminary research and register your trademark or patent as soon as possible.
Whilst China does not have the best reputation for strong IP protection, Chinese authorities are working hard to stop the infringement and protect the rights of companies, and are aware that in order to attract more foreign investment in China, there needs to be a strong IP framework. Therefore, the 2020 foreign investment law in China has developed a transparent and enforceable legal framework and provides the promising potential for the future of IP protection in China.