Protecting intellectual property in China

By Caroline BERUBE
Lawyer (China & Singapore)
HJM Asia Law & Co LLC

China and Canada share many common interests such as the enforcement of intellectual property rights (subsequently written as “IPR”). The best method to protect IPR is by registering commercial patents and/or brands, in spite of the required procedures and deadlines. In order to avoid litigious and complicated proceedings in cases of copying, we advise you to:

• Register all IPRs in your country of origin before entering China. This way, you can benefit from a priority over other applicants for the same or similar IPRs during a predetermined period under the Paris Convention. Only registered IPRs are protected.
• Apply to register your IPRs on arrival in China or even before your products penetrate the Chinese market by way of sub-contracting or sale.
• Make your application to competent authorities in order to accredit your trademark as a famous brand and benefit from the best protection possible.
• When a conflict arises, swiftly take legal action because the process is long and complicated. Mainly, two courses of action can be taken:

1. File a complaint with the administrative authorities if someone else registers IPRs that are similar or identical to yours.
2. Initiate court proceedings if the advantages linked to your IPR are violated.

The Chinese government has set very clear laws and regulations concerning trademarks, patents and copyrights and puts a lot of emphasis on ensuring that Chinese companies and individuals respect them. There has been a large rise in the number of cases where a Chinese company in China has abandoned an application for a trademark that is similar to that of our clients, or has paid damages for the illegal use of our client’s technology, following negotiations with and under the pressure that local government and Beijing authorities apply on Chinese companies in cases of IPR violation.

It is important not to neglect the registration of your internet domain (.cn, .com.cn, etc.). There has been an influx of Chinese companies informing our clients that a false and unfounded registration application has been attempted by a company or individual on their domain name. Keep your guard up, and make sure you register all domains that are similar to yours.