Doing Business Abroad: Protecting your IP in China

By Sukey Omran

Photo by Jie on Unsplash

This week’s guide focuses on protecting your trademarks in China.
 
The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion.
 
Where is IP registered?
 
The China National Intellectual Property Administration, PRC (CNIPA) administers the registration of trademarks as well as the grant of patents, whereas copyright registration is overseen by the Copyright Protection Center of China (CPCC), which falls under the National Copyright Administration of China (NCAC).
 
Trademarks

• What is it: A Chinese trademark distinguishes your company’s goods and services from those of others in the marketplace and may be composed of letters, words, numbers, colour combinations, three-dimensional signs (shapes) and/ or designs. In China, a sound may also be registered as a trademark.
• Filing System:  China uses the “first-to-file” registration process, which means that the first person to file a trademark application will generally have priority over a prior user of the trademark. Applications may also be filed and registered without evidence of use of the applied-for trademark. Due to the “first-to-file” trademark system and no use requirement to obtain registration, it is important to apply for trademark protection in China as early as possible.  Registration in Roman characters does not automatically protect the trademark against the use or registration of the same or similar trademark written in Chinese.
• Registration Period:. A trademark is registered for 10 years and can be renewed every 10 years.
• Non-Use: A registration for a trademark that has not been used in China for three consecutive years may be subject to cancellation.

IP Enforcement
There are several ways to enforce your rights against unauthorized use of your IP in China, including administrative actions, customs seizures and civil litigation.
 
You may choose to do the following in protecting your IP rights:

• IP may be registered with the General Administration of Customs of the People’s Republic of China (GACC). GACC acts to prevent infringing products from being exported from or imported into China. GACC customs officials can, inspect and seize goods which infringe IP rights.
• Some e-commerce sites based in China allow IP owners to request the removal of listings for products which infringe their IP rights.
• IP owners have both administrative and judicial recourses against infringers in China. The administrative system can be used for straightforward cases. The judicial system can be used to pursue civil and/or criminal enforcement. Injunctions to stop any IP-infringing activity can be ordered and damages may be awarded.

Interested in expanding your trademark protection into China? Contact us today.Contact Us
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