China is known for its inventions like gunpowder, the compass, and paper. But in recent years, China has had a rather different reputation, namely that of a shameless “copycat”. Although China has recognized the importance of Intellectual Property Rights (IPR) since 1979 and has joined the World Intellectual Property Organization in 1980, frequent violations and issues with pirated intellectual property are still discouraging foreign businesses from entering the Chinese market.
However, the Chinese Government is taking IPR cases seriously and has made considerable progress in the last couple of years, as a survey by the American Chamber of Commerce shows. Nevertheless, a better protection does not mean, that the risk of IPR theft has disappeared. We, therefore, highly recommend every business which is planning to set up operations in China to register your trademark and patents as early as possible.
TYPES OF INTELLECTUAL PROPERTY RIGHTS AND HOW TO PROTECT THEM
IPR consists of three types, Trademark, Copyright, and Patent. Trademark identifies brands of a particular product or service, while a copyright grants the creator exclusive rights to use and distribute an official work. Patents give exclusive rights to an inventor or assignee to use an invention exclusively for a limited period of time.
Copyright is different than Trademark and Patent because it applies automatically when the creator of a work has finished it and exhibited it to the public. Nonetheless, it is also possible to register the work, which makes it easier for the creator his or her authorship. You can register your copyright here.
A trademark is registered via the Madrid-System using the NICE-classification. Applying through this system allows enterprises and private persons to register automatically in all countries that have signed up to the agreement.
The NICE-classification consists of 45 different classes, depending on which product or service the applier’s product is, the applier should apply for the specific classes amongst the 45. The classes 1-34 consist of goods, while the classes 35-45 consist of services.
Technically, the registration can be done directly with the WIPO in Geneva. However, China has its own subcategories and Chinese Courts do seldom check international databases when deciding on IPR decisions. We, therefore, strongly advise registering your Trademark in China. (for more information, read our analysis of the Madrid System in China)
Applying for a Trademark in China usually takes 12 months, but in case the documents you provide are not adequate the application process can easily extend for 6 more months. To apply for Trademark contact the Chinese Trademark Office here. It is possible to look up companies and Trademark status’ here.
Applying for a patent requires that your product is new to the world within one of three categories:
Invention– such as new technical solution regarding part or all of a product or process or the improvement thereof.
Design – new design regarding shape, pattern, or their combination, or the combination of color and shape or pattern of a product, which creates an aesthetic feeling and is fit for industrial application.
Utility model – new technical solution relating to the shape, the structure, or their combination of a product, which is fit for practical use.
There are different documents you will need when applying for patent depending on which category you apply for.
For invention: the request, the claims, detailed description with accompanying drawings if appropriate, the abstract, and the drawing accompanying the abstract if appropriate
For design: the request, the pictures or photographs of the design, and a brief explanation of the design
For utility model: the request, the claims, the description with accompanying drawings, the abstract, and the drawing accompanying the abstract
For more information on how to apply for a patent, you can go to SIPO China’s webpage here.
ADVICE FROM OUR ECOVIS BEIJING LEGAL CONSULTANTS
As China follows a first-come-first-serve-policy, meaning if someone registers your trademark in China before you, it belongs to the earliest applicant and you have lost the rights to your brand, we highly recommend everyone who wants to do business in China to register their trademark.
For Copyright, we also recommend registering the work even though it occurs automatically. With a registered copyright on a work, the copyright owner doesn’t have to prove when the work was published for the public but instead refer to a database.
For a patent, but as well for Trademark and Copyright, it is highly recommended that you choose and apply for the categories cautiously and that you have all document ready. Minor mistakes in the application process will be taken seriously by the application offices and will extend the process.
Richard Hoffmann is a partner at ECOVIS Beijing China. Richard obtained an honors degree in law and worked in Germany, the United States, and China for various prestigious law firms prior to joining ECOVIS. In addition to being a member of the board of ECOVIS International, he is Supervisor for the China business of a respected German company and shares his extensive knowledge to students by teaching commercial law in China at SRH Hochschule Heidelberg. He has published more than fifty articles in international magazines, frequently speaks at high profile events in China and abroad and is often invited as a legal expert by international TV stations. Contact: firstname.lastname@example.org
Ecovis Beijing is the trusted tax and legal advisor to several embassies and official institutions in China. It specializes in mid-sized international companies and is focused on tax & legal advisory, accounting and auditing. If you’re interested in finding out more about tax and legal, don’t hesitate to sign up for our Newsletter, give us a call +86 10-65616609 or contact us directly via email@example.com.