13 LOWER LAD LANE, DUBLIN 2, IRELAND
Voice:
+ 353 1 661 3930
Fax:
+ 353 1 661 3453
Email: mail@hmc-ip.com
www.hmc-ip.com
HIGH TECHNOLOGY • SOFTWARE • BRANDS
Protecting Intellectual Property (IP) in China
As in Ireland, the UK and Europe, the main forms of protection for Intellectual Property (IP) in China are
Trade Marks, patents, design rights, copyright and trade secrets.
Trade Marks are registered signs that distinguish brands (e.g. name, logo or other form of branding);
Patents are granted for technological innovations;
Design protection includes registered designs and unregistered design rights. These relate to the
appearance of a product;
Copyright arises from original written material or a record of an original creation; and
Trade secrets, which relate to highly confidential industry knowledge or “know-how”.
IP rights are only enforceable within a particular country or legal jurisdiction. Thus, IP rights registered
Ireland and in the United Kingdom, in Europe, or in Hong Kong or any other jurisdiction do not provide
any protection in Mainland China.
Trade Marks in China
Chinese Trade Mark law has been brought in line with international practice since China joined the World
Trade Organisation. Word marks, logos and sounds, for example, can be protected as registered Trade
Marks in China.
Registered Trade Marks for Mainland China are issued by the China Trademark Office (CTMO). Trade
Mark applications can be made through the Madrid Trade Mark registration system for the international
protection of Trade Marks, or filed directly with the CTMO. Both formalities and substantive
examination are performed by the CMTO before the mark is registered. This process can take up to 18
months.
Trade Marks in China are granted on a "first to file" basis, with less emphasis placed on use of the Mark
than is the case for some other countries, where use of the Mark, in the jurisdiction, can be critically
important in obtaining registration. Once registered, Trade Marks must be used in China within three years
to remain valid.
Pre-Emptive Trade Mark Applications
Trade Mark applications, filed in “bad faith” (commonly referred to as “Trade Mark squatting”), tend to be
the single most common IP issue that UK companies encounter in trading in China. Typically, a Chinese
company or individual may apply for a Trade Mark which is being used in the market, with the intent of
selling back the registered Trade Mark rights including the right to use the Trade Mark to its original
Directors: Peter W.D. Hanna BA (Mod), EPA, CPA, RTMA; Barry Moore BSc, MSc, CPhys, EPA, CPA, RTMA; Donnacha Curley BSc (Eng), MSc, EPA, RTMA
Associates: Catherine Hanratty BSc, MSc, EPA, RTMA; Conor Boyce, BEng, MEng, CEng, EPA, RTMA; Richard Gillespie, BAI, MSc, EPA:
Technical Assistants: John O’Flaherty BEng
Paralegal Services: Tina Doherty, Dip. Legal Studies; Allison Breen; Barbara Farrell; Derek Healy; Grace Muldowney BSc DipIP;
Accounts: Di (Kitty) Wu, BA, MSc; Mary Doyle; Martina Conneely BComm ACCA: China Office: Yan (Amber) Guo, BA, MSc, ACCA,
A Limited Company Registered in Ireland No. 332738 VAT No: IE 635 2738 A
creator/owner, or to “piggy-back” on the international reputation of a particular brand owner. Pre-emptive
Trade Mark applications are most common in consumer retail industries, but can affect all sectors.
The best way to prevent Trade Mark squatting is to be the first to apply for Chinese Trade Mark
protection. Trade Mark applications in China are relatively inexpensive. Buying back your Trade Mark
rights in China would generally cost far more than the cost of filing a Trade Mark application in China and
registering your own Trade Mark before you start trading in China.
Patents and Design Rights
Patents & design rights protection is administered by the Chinese State Intellectual Property Office
(SIPO). Chinese law provides for three types of patent right in China, namely, Invention patents;
u t i l i t y model patents; and design patents/ Registered Designs.
(a)
Chinese invention patents are broadly similar to patents in the UK and require a full examination
by the Chinese Intellectual Property Office before grant. This process takes around 2 years. China is a
signatory to the international Patent Cooperation Treaty (PCT). This means that international applications
under the PCT can be converted into Chinese invention patents in the usual way as for other countries.
The total cost is variable depending on the complexity of the technology to be protected as well as on the
translation fees involved. Typically, invention patents involve Chinese official fees, attorney fees plus
translation fees (which depend on the number of words / pages). It is advisable to get an estimate based on
the exact circumstances in each case.
(b)
Utility models are sometimes called "mini-patents" or “petty patents” and require a lower level of
inventiveness. Applications for utility models in China are not substantively examined, and are typically
granted in 3-6 months. Utility models can be a useful way to secure protection quickly and relatively
inexpensively, for technological, mechanical and electrical products.
(c)
Design patents
Design means any new design of the shape, pattern or their combination, or the combination of the colour
with the shape of the pattern of a product which creates an aesthetic effect and is fit for industrial
application. Generally, the external packaging, appearance and colour of products may be protected by
registering a Chinese design.
Design patents are similar to registered designs in Europe and are filed at SIPO. It is possible to have
multiple designs in one application. Applications for Design patents in China are not examined, other than
for compliance with formalities requirements; so design patent registrations are typically granted within 36 months.
Since 1st May 2014, graphic user interface (GUI) protection is available in China.
Design patents can be the least costly Chinese form of IP protection; and again, the total costs depend on
the number of designs/ design variants to be protected as well as official fees and attorney costs.
Copyright
China is a signatory to the Berne Convention, so copyright arises automatically for any work created
inside or outside of China, without requiring registration for protection. However, it is recommended that
rights owners consider voluntary registration to help prove ownership in infringement actions.
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Trade Secrets
Trade secrets may be protected under China’s Anti-unfair Competition Law. Companies should seek
advice from legal professionals on using employee contracts and setting up internal systems to protect
against trade secrets leakage, and to improve chances of recourse should a problem occur.
General advice re: IP due diligence
Commercial arrangements can also be used to limit the likelihood and impact of IP infringements. Due
diligence should be undertaken ahead of any joint venture and any IP licensing agreements are entered into
that take full account of Chinese law including IP laws.
Disclaimer: This guidance briefing note is provided purely for general information only and does not in any way,
constitute advice. Specific advice should be sought in relation to any issue relating to IP, in China or elsewhere.
For more information, please contact our China Team at china@hmc-ip.com
Ireland
Hanna Moore & Curley
13 Lad Lane Lower, Dublin 2
Phone: +353 1 661 3930 Fax: + 353 1 661 3453
Email: mail@hmc-ip.com
Website: www.hmc-ip.com
United Kingdom
Hanna Moore & Curley
The Mount, 2 Woodstock Link, Belfast BT6 8DD, NORTHERN IRELAND
Phone: +44 28 90 737 293
Fax:
+ 44 28 90 730 199
Email: mail@hmc-ip.com
Website: www.hmc-ip.com
China
Hanna Moore & Curley
Room 8017, Chunhui Building, No. 24 Tangshan Road, Xigang District, Dalian 116011, P.R. China
Phone: +86 411 8361 4855
Email: china@hmc-ip.com
Website: www.hmc-ip.com.cn
Hanna Moore & Curley © Feb 20th 2015
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