There has long been a recognition that Chinese trade mark law has been moving toward a more reliable and consistent process. This is thanks to a series of new intellectual property laws which have been implemented over the last decade or so together with the establishment of many specialist intellectual property courts around the country.
There are a few key things to remember when working in China:
Saving money on legal fees can be a significant false economy. This is always the case but in China it is particularly important to have someone experienced guiding you through. There are key tricks to remember such as the importance of identifying the correct mark to file. This may the original latin characters of your word mark. The translated version (i.e. in Chinese character). Or the transliterated version (i.e. the version of your mark in latin characters but as actually pronounced in China). It may be worth registering all three. The Chinese lawyer can help you identify the optimum approach. There are similar issues to watch out for in terms of the classes of goods and services and the trade mark specification itself.
If there is an infringement of your rights in China, requiring a public notice of infringing activities in The China Daily can be a significant deterrence.
Recordals are really important in China – both copyright and trade marks should be recorded with Customs. Failure to do so can create problems down the line. The US government pays for the storage, evidence and destruction of counterfeit goods. In the EU and China, rights holders have to contribute to those costs.
China's new e-commerce law (together with the new IP laws) mean that listings of infringing goods can be more easily removed from platforms which sell counterfeit goods than ever before.
Avoid trade mark squatters by being the first to file your trade mark, design or copyright in China. This has become a HUGE problem since the start of the pandemic. You can save significant long term costs by filing the marks up front.
Invest in a global watch service to see when new trade marks and designs have been filed and be ready to oppose them.
Online marketplaces remain a counterfeiters paradise but social media has become the new go to venue for infringement. There are lots of influencers who market counterfeit products on sites like TikTok, Instagram and Twitter.
The sooner you manage a counterfeiting issue, the less likely it is to develop into a longer term problem.
Customs training remains key - although for the time being this needs to happen virtually.
To find out more contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com
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