Report on Enforcement of intellectual property rights by foreign companies in China
Both India along with European countries and China are members of world intellectual property organization (WIPO), having its intellectual property laws patterned onBerne Convention for the Protection of Literary and Artistic Works and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
The general intellectual property rights laws are enforceable in both countries as laws are similar to an extent (only differing in their own respective nation based on national legal framework), also being members of various international conventions and WIPO.
1.1Various laws in china provide for administrative, civil and criminal remedies in counterfeiting and piracy cases. These include the civil code, the tort law and the criminal law, as well as provisions in IP specific laws such as trademarks law, copyright and patent law, implementing their respective regulations and related judicial opinions.
Also emphasizing on product quality law and anti-unfair competition law.
At an international level, china is a signatory to most major IP treaties, including the Berne, Paris and nice conventions as well as in Madrid agreement and protocol.
It is also a member of world intellectual property organization and world trade organization.
‘IP enforcement in china takes place through administrative, criminal and civil channels depending upon the nature of the cases they are allotted ’, administrative channels are the most used channel as foreign companies get better monetary damages as compared to the other channels.
3. Provisions of Chinese Laws Available For Foreign Companies:
(a) Patent Law of the People's Republic of China
1.2There is a designated process to apply for a patent in china, which are as follows;
i. Nature – Creation of rights
.In general the patent office of the people’s republic of china receives and examines applications for patents and grants patent rights resulting from inventions. A patent may be granted if the invention is :
2. Inventive and;
3. Has practical applicability.
ii. Registration procedure–
The patent registration in china, which is based on first to file protection, begins with the filing of an application which must be submitted with the following information:
1.The nationality of an applicant
2.Location of the applicant’s office or the country in which the headquarters are located.
3.Relevant information relating to any claimed priority.
4.The signature or the seal of the applicant in the prescribed application.
5.Fulfillment of list of documents required to make up application.
6.Any other necessary indications.
7.The claims presented.
8.The title of the invention.
iii. Examination and approval –
Once the patent office has received an application, it proceeds with a preliminary examination within a period of 18 months after the date of filing and shall promptly publish the said application on the expiration of such period.
Chinese patent agents, under article 19 of the patent law, as amended on 25 august 2000, must maintain the confidentiality of all the inventions.
iv. Beneficiaries of rights –
In general, all the parties may benefit from the grant of a patent under Chinese law, including foreign individuals and entities and Chinese individuals and entities.
v. Maintenance (Period) –
A patent has a life of 20 years from the date of filling. The patentee must pay an annual tax to the patent office to maintain the validity of its patent.
vi. Expiration and cessation of validity –
In accordance with article 44 of the patent law, in certain cases, the patent shall cease being valid prior to the expiration of its duration for the following reasons:
1.The non-payment of the annual taxes ; or
2.The abandonment of the patentee’s rights by written declaration.
vii. Infringement action – Nature of infringement.
Infringement is referred to as any exploitation of a patent without the authorization of the patentee which constitutes an infringing act.
viii. Administrative Procedure –
In case where the administration having jurisdiction over patent matters (i.e., the authorities designated by the state council) is requested to take the charge of the matter, that administrator has the power, if the infringing act is proven to exist, to order the cessation by the infringer of the infringing act.
(b) Copyright Law of the People’s Republic Of China.
Section 1 Copyright Owners and Their Rights
Section 2 Ownership of Copyright
Section 3 Term of Protection for the Rights
Section 4 Limitations on Rights
Copyright Licensing and Transfer Contracts
Publication, Performance, Sound Recording and broadcasting.
Section 1 Publication of Books, Newspapers and Periodicals
Section 2 Performance
Section 3 Sound Recording and Video Recording
Section 4 Broadcasting by a Radio Station or Television Station
Legal Liabilities and Enforcement Measures
1.3 Chapter I General Provisions
Article 1 :
This Law is enacted, in accordance with the Constitution, for the purpose of protecting the copyright of authors in their literary, artistic and scientific works and the rights and interests related to copyright, encouraging the creation and dissemination of works conducive to the building of a socialist society that is advanced ethically and materially, and promoting the progress and flourishing of socialist culture and sciences.
Article 2 :
Chinese citizens, legal entities or other organizations shall, in accordance with this Law, enjoy the copyright in their works, whether published or not.
Foreigners and stateless persons whose works are first published in the territory of China shall enjoy the copyright in accordance with this Law. Any work of an author of a country that has not concluded any agreement with China or that is not a party to any international treaty to which China is a party and any work of a stateless person, which is first published in a member country of an international treaty to which China is a party, or simultaneously published in a member country of the treaty and in a non-member country, shall be protected by this Law.
For purposes of this Law, the term “works” includes, among other things, works of literature, art, natural sciences, social sciences, engineering and technology, which are created in any of the following forms:
(1) written works;
(2) oral works;
(3) musical, dramatic,quyi, choreographic and acrobatic works;
(4) works of the fine arts and architecture;
(5) photographic works;
(6) cinematographic works and works created by a process analogous to cinematography;
(7) graphic works such as drawings of engineering designs and product designs, maps and sketches, and model works;
(8) computer software; and
(9) other works as provided for in laws and administrative regulations.
Article 4 :
Copyright holders shall not violate the Constitution or laws or jeopardize public interests when exercising their copyright. The State shall supervise and administrate the publication and dissemination of works in accordance with the law.
Article 5 :
This Law shall not be applicable to:
(1) laws and regulations, resolutions, decisions and orders of State organs, other documents of a legislative, administrative or judicial nature and their official translations;
(2) news on current affairs; and
(3) calendars, numerical tables and forms of general use, and formulas.
Section 1Copyright Owners and Their Rights
(1) authors; and
(2) other citizens, legal entities and other organizations enjoying the copyright in accordance with this Law.
Article 10:Copyright includes the following personal rights and property rights:
(1) the right of publication, that is, the right to decide whether to make a work available to the public;
(2) the right of authorship, that is, the right to claim authorship in respect of, and to have the author’s name mentioned in connection with, a work;
(3) the right of revision, that is, the right to revise or authorize others to revise a work;
(4) the right of integrity, that is, the right to protect a work against distortion and mutilation;
(5) the right of reproduction, that is, the right to produce one or more copies of a work by printing, photocopying, lithographing, making a sound recording or video recording, duplicating a recording, or duplicating a photographic work, or by other means;
(6) the right of distribution, that is, the right to provide the original copy or reproductions of a work to the public by selling or donating;
(7) the right of rental, that is, the right to authorize others to use temporarily a cinematographic work or a work created by a process analogous to cinematography, or computer software, except where the software itself is not the essential object of the rental;
(8) the right of exhibition, that is, the right to publicly display the original copy or reproductions of a work of the fine arts or of a photographic work;
(9) the right of performance, that is, the right to publicly perform a work, and to publicly communicate the performance of a work by any means or process;
(10) the right of presentation, that is, the right to publicly present a work of the fine arts, a photographic work, a cinematographic work, a work created by a process analogous to cinematography, or other works, by projector, slide projector or any other technology or instrument;
(11) the right of broadcasting, that is, the right to broadcast a work or disseminate it to the public by any wireless means, to communicate the broadcast of a work to the public by wire or by rebroadcasting, and to publicly communicate the broadcast of a work by loudspeaker or any other analogous instrument transmitting signs, sounds or images;
(12) the right of communication through information network, that is, the right to make a work available to the public by wire or by wireless means, so that people may have access to the work from a place and at a time individually chosen by them;
(13) the right of cinematography, that is, the right to fix an adaptation of a work in a medium by cinematography or a process analogous to cinematography;
(14) the right of adaptation, that is, the right to change a work into a new one with originality;
(15) the right of translation, that is, the right to change the language in which the work is written into another language;
(16) the right of compilation, that is, the right to compile by selection or arrangement pre-existing works or passages therefrom into a new work; and
Section 2 Ownership of Copyright.
Article 11: Except where otherwise provided for in this Law, the copyright in a work shall belong to its author. The author of a work is the citizen who creates the work.
Where a work is created under the auspices and according to the intention of a legal entity or other organization, which bears responsibility for the work, the said legal entity or organization shall be deemed to be the author of the work.
The citizen, legal entity or other organization whose name is mentioned in connection with a work shall, in the absence of proof to the contrary, be deemed to be the author of the work.
Section 3 : Term of Protection for the Rights.
Article 20 No time limit shall be set on the term of protection for an author’s rights of authorship and revision and his right to protect the integrity of his work.
Section 4 : Limitations on Rights.
In the following cases, a work may be used without permission from, and without payment of remuneration to, the copyright owner, provided that the name of the author and the title of the work are mentioned and the other rights enjoyed by the copyright owner in accordance with this Law are not prejudiced:
(1) Use of another person’s published work for purposes of the user’s own personal study, research or appreciation;
(2) Appropriate quotation from another person’s published work in one’s own work for the purpose of introducing or commenting a certain work, or explaining a certain point;
(3) Unavoidable inclusion or quotation of a published work in the media, such as in a newspaper, periodical and radio and television program, for the purpose of reporting current events;
(4) publishing or broadcasting by the media, such as a newspaper, periodical, radio station and television station of a speech delivered at a public gathering, except where the author declares that such publishing or broadcasting is not permitted;
(5) Use of a published work by a State organ to a justifiable extent for the purpose of fulfilling its official duties;
(6) Reproduction of a work in its collections by a library, archive, memorial hall, museum, art gallery, etc. for the purpose of display, or preservation of a copy, of the work;
Chapter III : Copyright Licensing and Transfer Contracts.
Article 24 anyone who exploits another person’s work shall conclude a copyright licensing contract with the copyright owner, except where no permission need be obtained under this Law.
A licensing contract shall include the following main points:
(1) the category of the right to exploit the work covered by the license;
(2) the exclusive or non-exclusive nature of the right to exploit the work covered by the license;
(3) the territory and the term covered by the license;
(4) the rates of remuneration and the means of payment;
(5) the liabilities in the case of breach of the contract; and
(6) other matters which the parties consider it necessary to agree upon.
A copyright transfer contract shall include the following main points:
a. the title of the work;
b. the category of the right to be transferred and the territory covered by the transfer;
c. the rates of the transfer fee;
d. the date and the means of payment of the transfer fee;
e. the liabilities in the case of breach of the contract; and
f. other matters that the parties consider it necessary to agree upon.
Chapter IV Publication, Performance, Sound Recording, Video Recording and Broadcasting.
Section 1 : Publication of Books, Newspapers and Periodicals.
Article 30 : A book publisher who intends to publish a book shall conclude a publishing contract with, and pay remuneration to, the copyright owner.
Article 31 The exclusive right enjoyed by the book publisher in accordance with the agreement in the contract to publish a work that the copyright owner delivered to him for publishing shall be protected by law, and the work may not be published by others.
Section 2 PerformanceArticle 37:
A performer (an individual performer or a performing group) who exploits, for a performance, a work created by another person shall obtain permission from, and pay remuneration to, the copyright owner. Where a performance is organized by a person, the organizer shall obtain permission from, and pay remuneration to, the copyright owner.
Article 38:A performer shall, in respect of his performance, enjoy the following rights:
(1) to claim performer ship;
(2) to protect the image inherent in his performance from distortion;
(3) to authorize others’ live broadcasting or communicating to the public of his performance, and receive remuneration therefrom;
(4) to authorize others’ making of sound recordings and video recordings of his performance, and receive remuneration therefrom;
(5) to authorize others’ reproduction and distribution of the sound recordings and video recordings of his performance, and receive remuneration therefrom; and
(6) to authorize others’ making of his performance available to the public through information network, and receive remuneration therefrom.
Section 3: Sound Recording and Video RecordingArticle 40:
A producer of sound recordings or video recordings who exploits, for making a sound recording or video recording, a work created by another person shall obtain permission from, and pay remuneration to, the copyright owner.
Section 4: Broadcasting by a Radio Station or Television Station
Article 43: A radio station or television station that broadcasts an unpublished work created by another person shall obtain permission from, and pay remuneration to, the copyright owner.
Chapter V : Legal Liabilities and Enforcement Measures
Anyone who commits any of the following acts of infringement shall, depending on the circumstances, bear civil liabilities such as ceasing the infringement, eliminating the bad effects of the act, making an apology or paying compensation for damages:
a. Publishing a work without permission of the copyright owner;
b. Publishing a work of joint authorship as a work created solely by oneself, without permission of the other co-authors;
c. Having one's name mentioned in another person’s work in the creation of which one has taken no part, in order to seek personal fame and gain;
d. Distorting or mutilating a work created by another person;
e. Plagiarizing a work created by another person;
i. Exploiting a work for exhibition or film-making or in a manner analogous to film-making, or for adaptation, translation, annotation, or for other purposes, without permission of the copyright owner, except where otherwise provided for in this Law;
ii. Exploiting a work created by another person without paying remuneration as one should;
iii. Renting a cinematographic work or a work created by a process analogous to cinematography, computer software, or products of sound recording or video recording, without permission of the copyright owner or the owner of the rights related to the copyright, except where otherwise provided for in this Law;
iv. Exploiting the typographical design of a published book or periodical, without permission of the publisher;
v. Live broadcasting, communicating to the public, or recording a performance, without permission of the performer;
Issues faced by foreign companies while enforcing intellectual property (IP) rights in china.
Rigid and impractical approach towards Intellectual property laws:
# 1.4On intellectual property rights, the report concluded: “Despite ongoing revisions of laws and regulations relating to intellectual property rights, and greater emphasis on rule of law and enforcement campaigns in China, key weaknesses remain in China’s protection and enforcement of intellectual property rights, particularly in the area of trade secret misappropriation.
# Intellectual property rights holders face not only a complex and uncertain enforcement environment, but also pressure to transfer intellectual property rights to enterprises in China through a number of government policies and practices.”
Improper administration and limited monetary damages:
# Apart from difficult procedure provided by Chinese law enforcement even if any foreign company manages to win case against the infringer (Chinese company), the monetary damages provided to them are very low as compared to the intellectual damages incurred by the aggrieved company also the time consumed within that process including miscellaneous expenses.
·Copyright cases: Max ¥500k ~ USD 73604.10.
·Patent and Trade secret cases: Max ¥1M ~ USD 147208.20.
·Trademark cases: Max ¥3M~ USD 441624.60. (Effective as of May 1, 2014).
# Also referring to an article from Chinese patent and trademark law office under Judicial Or Administrative Action heading it says :
1.6 “Where the copyright infringement damages the public interests, and the illegal proceeds are more than 50,000 Yuan, the copyright administrative authority may impose a fine of more than one time but less than five times of the illegal turnover of the infringer; if there are no illegal proceeds or the illegal proceeds are less than 50,000 yuan, a fine of not more than 250,000 Yuan may be imposed by the copyright administrative authority according to the seriousness of circumstances”.
Further issues pointed by:
1.7 REPORT MADE ON PATENT ENFORCEMENT IN CHINA PREPARED BY THE U.S. PATENT AND TRADEMARK OFFICE.
TheU.S. Patent and Trademark Office (USPTO) has pointed out several flaws in various aspects under Chinese administration for enforcing general intellectual property right which are as follows:
# Evidence Introduction and Review
Many commenter raised difficulties with introducing evidence from outside of China and through expert testimony.
Commenter report that U.S. rights holders find it very difficult to introduce evidence obtained in a foreign country.
Chinese courts often refuse foreign evidence unless that evidence was first notarized by a notary in the foreign country where such evidence was obtained and then legalized by a Chinese embassy or consulate in that country. This results in a significant financial and time burden to U.S. rights holders.
Commenters also identified unclear rules for submitting translations of evidence that is originally in a foreign language and requirements to submit evidence through live testimony.
# Effectiveness and Enforcement of Remedies
Commenter raised a number of concerns with the ability of successful litigants to obtain and enforce effective remedies. Commenters recognized that in order to effectively foster innovation, patent owners must be able to obtain meaningful relief in the event of patent infringement; such relief must not only serve as a monetary remedy for the patent holder, but also serve as a deterrent to prospective infringers.
Commenter generally raised concerns with three aspects of China’s system for remedies: insufficient monetary damages; overly burdensome requirements to obtain injunctions; and difficulty enforcing awards.
# Insufficient Monetary Damages
Commenter report that it is extremely difficult to obtain monetary damages that are sufficient to compensate patent holders for losses, let alone act as a deterrent to would-be infringers.
Commenter also noted that sinceChinese law does not treat the exportation of goods to be an act of infringement, rights holders are disallowed from including exported goods in calculating lost profits or other forms of damage.
# Difficulties Obtaining Injunctions.
Commenter identified difficulties in obtaining injunctions, both preliminary and permanent, under Chinese law. Commenters stressed that injunctions are an essential component of an effective patent enforcement regime.
Lack of clarity as to when injunctive relief may not be available, for example when a court may deem a patented invention was “essential” to a local economy, further decreases the ability of rights holders to understand and effectively use China’s patent enforcement mechanisms
Recommendations made by the commenter of (USPTO).
1.Commenters recommended that China ease its notarization and legalization requirements, including by joining the “Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents” and/or by easing the requirement to legalize foreign evidence by, for example, eliminating the need to notarize and legalize foreign evidence.
2.In addition to those recommendations provided related to evidence collection, recognition, and preservation, commenter also suggest that China should lower the burden of proof for damages, increase the maximum damages allowed under Chinese law (above the 1 million RMB cap under the fourth method of damages calculation), and provide a mechanism for imposing punitive damages and recovery of attorney’s fees in instances of wilful infringement.
3.Commenters further identified a requirement that a court rule on a preliminary injunction request within 48 hours as a factor that significantly impacts the ability of patent holders to receive a preliminary injunction
4.Commenters suggest that China lower the threshold for obtaining a preliminary injunction (e.g., adopt a “likelihood of success” standard), publish clear guidance on what evidence a rights holder must submit to obtain a preliminary injunction, and provide a longer period of time to decide on petitions for a preliminary injunction.
#It is due to certain limitation imposed on monetary, foreign companies operating in big scale (globally) are not benefited even after getting awarded ‘damages’ by either public court or administrative authorities, as the amount is always less as compared to the losses incurred by such aggrieved foreign company (also it is very difficult to estimate losses based on circulation of such intellectual properties).
# Although china is member of WIPO and various international conventions which encourages more ethical business by protecting intellectual property right of the respective authors but due to loopholes rather their limitation on monetary damages (sanctioned by administrative authorities or public court) neither foreign companies can avail rightful damages in monetary terms from infringer (accused Chinese company).
#A few IPR enforcement cases in China have been widely reported and illustrate lessons for foreign companies experiencing IPR enforcement issues in China. Some of them are as follows :
Microsoft’s copyright case.
Microsoft sued GOME for infringing its copyrights on software programs Windows XP Professional, Windows 7, MS Office Professional 2003. The case was heard in the Intermediate Court of Shanghai in 2012.
Microsoft presented copyright certificates of the infringed software programs registered in US and notarization of evidence for that GOME staffs installed these software program when selling PC products in GOME’s shop without authorization of Microsoft.
GOME defended that the software programs were installed by the salesman after selling of the computers. GOME had no intention and was not liable for such acts. The court judged that GOME had infringed Microsoft’s copyright .
Microsoft was awarded¥110k in damageswhich was determined on the basis of the degree of recognition, retail prices of the infringed products, nature, period and results of infringement acts.
Source: Technology Protection and China IPR by Tekes Company (page 16 of 42).
Royal Philips Electronics N.V.
has brought a lawsuit against two lighting companies in Shanghai and Wenzhou for infringing its trademarks “PHILIPS”, “飞利浦” andrequested for compensation of ¥500k.The case was heard in a District Court of Shanghai in 2010.
As the Defendants had been punished for the same infringement acts by the State Administration for Industry & Commerce and the Municipal Bureau of Quality and Technology Supervision respectively, they admitted they had produced and sold products with representation of marks “PHLIPS”, included “飞利浦” in the name of manufacturer and registered website name: “phlips.net” .
Philips was awarded¥200k in damages which was determined according to that PHILIPS is a well-known trademark and the infringement was acted with bad intention.
1.8 Enforcement of Intellectual property rights under Chinese administration (authorities and their functions respectively ).
i. IPR and enforcement in China:
The intellectual property rights (IPR) available in China are very similar to those available in Europe and other Asian countries being enrolled as a member under various international conventions. The namely registered rights available are invention patents, utility patents, design patents and trademarks.
ii. Enforcement proceedings available by authorities:
There are four main authorities and their functions for enforcement of IP rights
in China respectively:
i) Administrative actions,
ii) Civil litigation,
iii) Criminal sanctions, and
iv) Customs seizures.
i) Administrative actions The key Chinese administrative bodies are the Intellectual Property Offices (IPOs), the Administrations for Industry and Commerce (AICs), the Copyright Office, and the Quality and Technical Supervision Bureaus (QTSBs) (local divisions of the Administration for Quality Supervision Inspection and Quarantine). These are empowered to take certain actions against companies infringing intellectual property rights.
These bodies between them have the power to:
• Raid defendants’ premises and to seize and destroy infringing items;
• Impose injunctions to force the infringing party to desist; and
• Levy fines on the infringing party for TM infringement, copyright infringement and counterfeiting patent certificates, (but not patent infringement).
ii) Civil litigation: is equivalent to a court case in Europe. The usual remedies sought are injunctions, damages, delivery up and destruction (of tools/products).
A civil action will generally take six to 12 months from the issuance of proceedings until handing down of the judgment. Infringing acts under Chinese Patent law include sale, offer for sale, use, manufacture and export.
iii) Criminal sanctions: are only used in relation to patents where the counterfeiting of the patent certificates themselves has taken place. Such actions are rare; criminal proceedings are more common in relation to trade mark and copyright infringements.
There are three methods of bringing criminal sanctions:
·IP owner reports to the Public Security Bureau (PSB);
·An administrative agency transfers its case to a criminal agency when it comes to suspect the damage inflicted by the defendant exceeds certain thresholds; or
·A trade mark owner can choose to file a criminal lawsuit with the court known as a private prosecution.
The first two approaches are common whilst the final approach is less so because claimants have no compulsory powers to obtain evidence, unlike the authorities.
If the seized goods are found to be counterfeit, the Customs shall confiscate the goods and dispose the goods in the following ways:
1. To transfer the goods to a charity organization, if the goods can be used for the charitable purpose,
2. To sell the goods to the intellectual property right owner, if the owner is willing to purchase the goods,
3. To auction off the goods after removing the infringing features, or
4. To destroy the goods, if the infringing features could not be removed.
iii. Enforcing a judgment:
If the defendant does not comply with the terms of the court judgment or a court endorsed settlement then the claimant should apply to court to enforce the judgment. In these circumstancesit will benefit the claimant greatly if it had obtained an APO (Asset Preservation Order)earlier in proceedings because the damages award will be paid out of the preserved assets.
If the claimant did not obtain an APO then the claimant should, following its own investigations, inform the court of the approximate value of the defendant’s assets.
If there are sufficient funds in the defendant’s bank account then the court can seize that to satisfy the terms of the judgment or settlement. If there are insufficient funds in the bank account then the court can order the assets of the defendant to be sold by auction.
Alternate solutions for enforcing intellectual property rights in China by foreign companies.
i) Citing precedent in a non-precedential legal system.
·Unlike the United States, which has a common law legal system based primarily upon past judicial opinions that interpret legislation, China is a civil law country. Chinese judges make rulings based directly on statutes without regard to other court decisions.
·The judges make their decisions autonomously by requesting and challenging evidence, questioning the witnesses, receiving briefs and hearing arguments from legal counsel, and even consulting their own experts. Judges in China do not respond to precedent.
·But the Chinese Supreme People’s Court (SPC) recently issued illustrative cases for reference in judging IPR disputes in the lower courts.
ii) Establishing local relationships.
·In China, the courts are not independent of the government as in the United States. Court appointments are made by the local government, and the local government depends on local companies for employment and tax income.
·These relationships tie local businesses to the courts. In China, conflict of interest is traditionally not a concern for Chinese officials. Foreign companies should try to establish contacts in the local government as well as the courts as part of doing business.
·Generally, the involvement of a Chinese lawyer or qualified agent to handle an IPR enforcement case in the court or before the local administrative authority will be a legal requirement. The goal for foreign companies should also be to identify local counsel with strong local relationships and a prominent reputation.
iii) Seek an early injunction from an administrative agency.
·Administrative enforcement of IPR is a feature particular to China. Local authorities may not be able to hear complex or highly technical IPR cases; however, they should be able to handle simple patent, trademark, or misappropriation cases.
·Foreign companies should not overlook this enforcement route simply because monetary damages are not available.
·Damage awards in China are generally modest anyway, due to the lack of discovery and statutory award limits. Also, if the attempt at enforcement by the administrative authority fails, a company can sue the infringer in court.
iv) Obtain utility model patents.
·China grants two levels of patents: invention and utility model. Invention patents are similar to utility patents in the United States. Utility model patents are different in that they are not examined, have a term of only 10 years, and can only be directed to the structure of an apparatus.
PREVENTIVE MEASURES RATHER STARTEGIES:
It is advisable to foreign companies to abide by certain preventive measures in order to protect their brand sufficiently in china, which are as follows;
1)File as early as possible, even if the brand is not in china.
As china is a first-to-file jurisdiction, foreign brands should ensure that they have applied for the necessary marks as early as possible. Even if the product or service is not currently being offered in china, defensive filings to deter counterfeiters are a necessity.
2) Choose a suitable Chinese language mark.
When registering a mark in china, right holders should ensure that they have covered both their foreign language mark and its Chinese equivalent.
3) Note class-wide specifications.
Chinese domestic classification system is based on ‘similarity sub-classes’, whose importance is regularly overlooked by foreign filers.
Right holder s should endure their specifications are as broad as possible to avoid leaving gaps for squatters eager to gain a trademark registration certificate foe the foreign trade mark.
4) Regularly monitor trademark office gazette and online database.
Right holders should conduct regular searches of key classes in the trademark office gazette as well as maintain records of such searches. Once counterfeiters are identified, they can prepare a watch list for those attempting for register copies marks.
5) Obtain copyright registrations.
Proof of copyright ownership for logos and stylised versions of word marks can come in very handy, both in oppositions against infringing trademarks and against counterfeits bearing those marks.
Right holders should conduct regular searches of key classes in the trademark office gazette as well as maintain records of such searches. Once counterfeiters are identified, they can prepare a watch list for those attempting for register copies marks.