by
Aphrodite A. Bletas*
The Chinese market as challenging and complex it might be, it requires constant diligence and expert know-how.
IP protection in China today
Many foreign brand owners are totally unaware of the risk and avoid to protect their brands prior to begin their Chinese venture, either to avoid the high cost or thinking such a step is completely unnecessary. Both approaches are wrong and must be avoided. International IP protection is required for all exporting companies, and they should include China, even if they do not intend to immediately approach its market.
Brand protection in 7 Steps
What we said so far proves that a brand protection strategy in China is not only advisable but compulsory. A registered trade mark is also a powerful tool in the fight against counterfeit goods. Seven considerations are therefore essential:
1. Early registration and prior research
China operates its trade mark registration system on a first to file basis therefore early registration of business, brand names and logos as well as prior to registration research is essential and should be considered long before a business decides to enter the Chinese market or even enquire about business possibilities. Not to mention that any use of an unregistered brand may result in it being considered generic and therefore not subject to protection.
2. Territorial registration
As China is not part of the WIPO, to get registered protection a company must apply for trade mark rights in China through a local office. This will not cover overseas territories such as Hong Kong, Macau and Taiwan which require separate registrations.
3. Register trademarks also in Chinese
It is advisable to develop a Chinese language mark in China. The Starbucks/Xingbake case highlights the importance of registering both the English name and its equivalent Chinese symbols as trademarks to avoid wasting time and money on litigation proceedings.
4. Vigilance
Monitor trade mark and domain name registrations and search the internet for unauthorized brand usage is one of best practices in China.
5. Dispute solving
A dispute clause in the license agreement which not only provides for disputes to be dealt with in an alternative jurisdiction and/or method but also makes very clear that all other jurisdictions are excluded and incompetent is a must. Mediation proceedings might be a method of election, but then in-country enforcement measures must also be expressly referred to in the agreement.
6. Utilize available enforcement procedures
If a brand infringement is found in China, there are two principal routes for enforcement: administrative and judicial. The administrative would be the route of election as it is cheaper, quicker and discrete although it does not solve the ownership issue nor does it provide for damages.
Conclusion
Brand protection is for diligent business people. This is true around the world; even more so in China. For brand protection in China, a pro-active approach is essential. Despite the dangers, research, careful preparation and acting upon infringement will lay effective foundations for a business's intellectual property.
The Chinese government is incessantly trying to expand and co-ordinate the IP tribunal system, in all parts of China, not only Beijing and Shanghai becoming your best partner to this effort.
Finally, as China remains a preferential business partner, despite its complexities, due to the numerous opportunities it offers, its huge size and a growing economy, to ignore China is not an option.
*Aphrodite A. Bletas is Lawyer & Mediator, European Patent Attorney. She is also a Senior Partner a “Bletas & Costakis law firm” and President of the Hellenic-Chinese Center for Entrepreneurship
By: N. Peter Kramer
