Introduction to China’s IP and trademark system
China’s IP system has rapidly evolved over the past three decades to become a highly modern, increasingly efficient and in some places even innovative system, mixing traditional elements of IP protection as known in developed countries “with Chinese characteristics”. As a result, today’s system on IP in China features an incredible amount of IP generated and filed not only by foreign companies, but also domestically. As a case in point, the number of trademark filings in China has ranked first worldwide for many years.
The most important authority for registration of patents, designs and trademarks is the China National Intellectual Property Administration(CNIPA). This new authority succeeded the previous State Intellectual Property Office and now includes the Chinese trademark office, which was formerly part of the State Administration of Industry and Commerce (SAIC), now known as the State Administration of Market Regulation (SAMR). Patent or trademark filing application , opposition, invalidation, assignment, license etc. are all handled by this administration under the procedures detailed in the Patent Law, Trademark Law and related Implementing Regulations and examination guidelines. Some special rules exist for Geographical Indications which may be protected not only as certification or collective trademarks in China, but also under a separate system originally managed by the General Administration of Quality, Supervision, Inspection and Quarantine (AQSIQ).
In China, only under very exceptional circumstances will unregistered trademarks enjoy protection. Foreign applicants have to make use of registered IP agencies such as Beijing Tailun to file domestic applications, handle procedures and appeal decisions with the CNIPA for patent and trademark matters. While CNIPA can make administrative decisions on granting, upholding or invalidating patents or trademarks, its decisions are subject to review by Chinese courts in Beijing, most notably the Beijing IP Court as first appeal instance, and the Beijing People’s High Court (and the Supreme People’s Court) for further appeals. Depending on the type of procedure, cases move with different speeds until resolved, and do require adequate strategies and sufficient evidence to lead to an overturning of the CNIPA’s decisions.
For enforcement procedures, cases are usually not handled by the CNIPA, but in simple matters such as clear-cut counterfeiting of trademarks or patent abuses by local Administration of Market Regulation and Supervision Bureau. This so-called “administrative enforcement” procedure can be quick, affordable and convenient, but requires for the respective administrative authority being willing to take a case (“li an”), and in some places, protection on local companies or bribery by the infringer may lead failure of the enforcement action. In more complex or legally difficult cases, right owners may be rejected and have to revert to Chinese civil courts to enforce their rights. This concurrent possibility of enforcement either by courts or administrative enforcement is often referred to as dual system. It requires sound analysis and advice to choose the right path in each case to make the system work in one’s favor.
For domain names with the TLD “.cn”, the China Internet Network Information Center under the Ministry of Industry and Information Technology (MIIT) is the responsible administrator. CNNIC offers a separate dispute resolution mechanism for a limited period of time after registration of a domain name. Thereafter, disputes usually will have to go to the related competent courts for resolving.
Copyright is registered by the China Copyright Protection Centre under a separate system, governed by the Copyright Law and related Implementing Rules. While registration is not mandatory, it can bring significant advantages and therefore may be considered as a further useful element for effective IP protection in China.
The General Administration of China Customs (GACC) is again another independent agency, providing a highly useful and efficient system for registration and enforcement of local IP rights (in practice mostly for trademarks, designs and copyright). Procedures and legal requirements shall follow GACC’s own related regulations on IP protection and lead to storing of the right owner’s information in a central national database shared with all ports. While registration with customs is strictly speaking legally not mandatory for action to be taken against IP infringing goods entering or leaving the country, it is in practice a very important requirement to make the system work. Customs requires quick and professional cooperation, which may put a great burden on right owners not locally represented or aided by an IP agency.
The IP system in China also focuses on digitalization: Enforcement of IP rights in China is tackled not only with increasing resources and promotion of IP protection by the Chinese government, but also promotion of electronic filing and digital services. In enforcement matters, judges and courts are open to and experiment with new ways of procedure, such as video chats and online litigation used in the Internet court of Hangzhou, Zhejiang province and other regions.
Finally, for most IP rights the Ministry of Public Security (MPS) can investigate and together with the Supreme People’s Procuratorate (SPP) prosecute severe IP infringements. However, the threshold for criminal enforcement is not easily reached and requires sound evidence to be presented by right owners.
The multitude of responsible agencies and procedures requires proper strategy, preparation and oversight. Beijing Tailun is happy to assist its clients in making China’s IP system work in their favor to the greatest extent possible.