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13 oktober 2020

Intellectual Property protection in China: the last step

Last week a client asked me: “what is the most asked question when you are discussing doing business in China?” My answer will not surprise you: How can I protect my trademark in China? In this blog I will discuss the steps to successful protection of IP in China.

First and foremost: register!

Yes, you can protect your trademark and other intellectual property (IP) in China, however these must be registered before you go and show your products in China. China has a first come first serve principle. I must note that in most cases of complaints about “IP theft”, the IP was not registered before the trip or sending the samples to the manufacturer. In some cases, the IP was registered by a (seemingly) helpful Chinese partner, that had registered the IP in his name or even worse in the name of someone else. In most of these cases, we succeed in getting the trademark back but at a cost that is much higher than the cost of registration. Even if you are only manufacturing in China and not selling, my advice is always first register.

File your IP

You will only have protection after you have filed your trademark. What should you register? Of course the trademark you are using for the products you make and/or sell, but it might be a good idea to also register for more goods i.e. in more classes, especially if you want to block the sale of goods on sites like JD or Alibaba sold under your trademark, but that are outside the scope of your original registration. Secondly, in China always register your trademark in Chinese characters. Most Chinese customers will remember your trademark by its Chinese name and not its Western name. If you do not register the Chinese characters someone else will do or worse, the public will come up with a name which you do not like.

The last step: China customs

A registration of your trademark by itself will not stop other parties from making counterfeit goods. It gives you the legal capability to enforce your rights thus making your legal position stronger. By the way this applies to patents, copyrights, etc. So, if you are worried about counterfeit goods being shipped from China, the last step in your IP strategy should be to register your China IP with the customs authorities in China. The customs will inform you about a possible infringement they have discovered. In practice, you will have a couple of days to request the seizure of the goods. After such request and paying a bond, the customs will check whether the goods are real or fake. If they are fake the goods can be destroyed and the costs will be deducted from the bond.

Registration requires pictures of your goods, a copy of your business license, a copy of the IP certificate and a power of attorney. The documents should all be in Chinese. And since China is a relationship-based society, pay a visit to the Customs showing and demonstrating your products. Registration can only take place after the registration of the IP rights and usually takes a couple of months.

So yes: start by registering your IP before you go to China and take the last step of registration with China customs.

More information

If you need further information please do not hesitate to contact our Asia team Joost Vrancken Peeters at +31620210657 or jvp@lgga.nl or Ye Yu at +31639267995 or y.yu@lgga.nl.