Registering your IPRs
China implements the system of trademark registration. According to
China Trademark Law, “registered trademarks” refer to trademarks that
have been approved and registered by China Trademark Office (CTMO). Only
a trademark is “registered” can the registrant enjoy the exclusive
right to use this trademark and be protected by law. So a trademark
owner shall apply to CTMO for registration if he wants the trademark
used in business to be fully protected by the law. Another kind of right
that closely relates to trademark is domain name. It is widely known
that some Chinese domain squatters would register right owners’
trademarks/trade names as domain names before these right owners begin
to develop their business in China. So you shall file trademark/domain
name registration in China as early as possible when you decide to
conduct business in China.
As for copyright registration, given China has already been a member
of Berne Convention, the creator can automatically enjoy copyright
protection in China once a work is created. Even though, a copyright
registration certificate could be regarded as a preliminary proof of
ownership in court proceedings. Therefore, you should strongly consider
registering your copyright, especially for copyrights that are
particularly important to the livelihood of your business.
Pursuant to China Patent Law, three types of patents can be protected
in China, they are patent for invention, patent for utility model and
patent for design. You may apply for a patent in China through a
licensed patent agency in China.
Taking appropriate actions against IPR infringements
Chinese laws present IPR owners with several ways of protecting their
lawful rights and interests. In addition to their own internal
protection efforts (including requesting take-downs of counterfeit or
infringing goods, sending cease and desist letters, etc.), IPR owners
may, depending on the circumstances, enlist the help of competent
administrative and judicial authorities to protect their IPRs through
the following ways.
A. Administrative complaining
Administrative complaining is unique tool for IPR owners to protect
their rights in China. According to China Trademark Law, China Copyright
Law and China Patent Law, IPR owners are entitled to request competent
authorities to deal with IPR infringements when they think their IPRs
are infringed by others. If the competent authorities determine that the
infringement have indeed occurred, they would generally order the
infringers immediately to cease the infringements, confiscate and
destroy the infringing goods and the tools used to manufacture the
infringing goods, and may also impose a fine.
In practice, IPR owners who are familiar with China IPR-related laws
will, in many circumstances, generally tend to choose this option.
Compared with judicial recourse, administrative complaining is a
time-saving and cost-saving way and often yields quick results,
especially for cracking down infringing products within a defined area.
B. Customs protection
An IPR owners that has registered its IPR in China may opt to file
that kind of IPR, as well as the names of the entities/persons licensed
to use it, with the General Administration of Customs(GAC) for the
record, so as to secure fuller customs protection. If a local customs
authority discovers that there are suspected infringing products to be
exported or imported through customs, it will temporarily seize the
goods and ask the IPR owner to confirm the nature of the suspected
goods. If the IPR owner believes the suspected goods to be infringing
goods, the local customs will generally confiscate and dispose of these
goods, and may impose a fine on the infringer.
Through customs protection, an IPR owner can quickly discover the
infringement and stop exporting/importing infringing products, in
particular for famous international brands or products.
C. Civil infringement suits
With respect to serious or large-scale infringements, IPR owners may
have consider instituting a civil infringement suit in the competent
people’s court, demanding that the infringer cease the infringement, or
pay damages. What should be paid attention to is that the court civil
proceeding is usually complex and time-consuming. However, an effective
court judgment is final and can be used to warn potential infringers,
and may compensate the IPR owner to some extent, though the compensation
could not be very high in current China judicial practice.
D. Criminal investigation
This method is applied to serious IPR infringements that meet the
criteria for a criminal case only. Once any serious IPR infringement is
found, the IPR owner my lodge a report with, and provide leads to the
competent public security bureau (PSB). The PSB will investigate the
leads that IPR owner provided and determine whether a criminal IP case
is constituted; If this is the case, the case will be transferred to
prosecutorial authority for public prosecution. In practice, the IPR
owner needs to cooperate closely with PSB and prosecutorial authority in
a criminal case, for these authorities sometimes have difficulties in
investigating IP crimes.
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