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Additional Resources

Law enforcement agencies around the globe conduct counterfeit website “takedown raids” throughout the year. Participation in these law enforcement operations is free to SMEs but it does require close coordination with the law enforcement agencies. The major benefit to SMEs is that companies can leave the burden and costs of takedown activities to law enforcement agencies saving SMEs money and time. Brand protection service providers can help businesses follow these operations and submit the information needed to remove websites selling counterfeits. Below are the some of the key operations in which SMEs can participate:

I. International Resources

a. Operation Pangea

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Operation Pangea is organized by Interpol and has been in existence since. This operation aims to reduce the sale and availability of counterfeit pharmaceuticals online with the active goal to reduce harms to Internet users and improve the internet experience. Enforcements happen at determined times throughout the year. If you are interested in learning how and when you can participate and submit infringing website for takedown, you may contact the US Customs Immigration and Customers Enforcement in the United States or Interpol in Europe.

b. Operation “In Our Sites”

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Europol’s and the IPR Center’s hugely successful and long-standing Operation “In Our Sites” (IOS) focuses on the removal of counterfeit sites online across domain names. This operation utilizes multiple police agencies across Europe and the United States. Like Operation Pangea, enforcements happen annually at times determined by the law enforcement agencies. For more information on how to participate and where to submit infringing website information, companies should check with the IPR Center or Europol.

c. Operation Aphrodite

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Operation Aphrodite is managed by the EU’s Intellectual Property Office and focuses exclusively on counterfeit sales on social media and websites. This operation is run with the cooperation of Europol and agencies in Belgium, Bulgaria, Cyprus, Greece, Ireland, Italy, Portugal, Spain and the United Kingdom.

d. Operation Creative

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This operation by the London Police’s IP Crime Unit aims to disrupt and prevent websites from providing unauthorized access to copyrighted content. With a wealth of UK advertising and music content organizations involved including the Internet Advertising Bureau UK (IAB UK), BPI (British Phonographic Industry), IFPI (International Federation of the Phonographic Industry), and PRS for Music, Operation Creative suspends and removes pirated content as well as advertising.

II. Tips for IP Protection in China

Information below provided by Heng Li, Counsel and Senior Analyst at IACC. She is licensed to practice in the State of New York. Heng previously worked as a trademark attorney for a law firm in Beijing, China.

Copyright Registration in China

Copyright is an automatic right, meaning that the author enjoys the copyright as soon as the original work is created and fixed in a tangible form of expression. Unlike trademark and patent, which are territorial IP rights, copyright of a foreigner is also automatically protected in China through the Berne Convention, provided that the author is from a member state of the Berne Convention.

China implements a “voluntary copyright registration” principle, and generally, you do not need to register your copyright to enforce it in China. However, it is advisable to obtain a registration certificate for your copyright. When it comes to a copyright dispute or in the event of an infringement, the copyright registration will serve as prima facie evidence of ownership and alleviate your burden of proof, though this evidence can be challenged by counter-evidence.

With or without copyright registration, it is always important to keep the files and records of your creation of the works.

Where to file a copyright registration?

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Designated by the National Copyright Administration of China, the Copyright Protection Center of China (CPCC) administers the copyright registration of various types of work, and it is the one and only institution designated to administer computer software registration. Some local Copyright Bureaus also have the right to administer copyright registration for local residents or companies.

How to file a copyright registration?

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Copyright registration is a relatively simple procedure and can be done on your own, whereas for trademark or patent registration, foreigners must hire and authorize a local agency to proceed.

To file a copyright registration, an applicant is required to submit an application form, identification certificate(s), ownership statement (if applicable), power of attorney (if applicable), and a sample of the work. Filing with the CPCC can be completed online here.

Registration fee varies by the type of work. Information on CPCC’s copyright registration fees can be found here.

How long does it take to receive the registration certificate?

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If an application is completed and filed and no rectifications are requested, you can expect to receive the registration certificate in 30 business days after submitting the application.

Copyright Notice

A copyright notice is a notice placed on a work to inform the public the work is protected by copyright law, the copyright owner of the work, and the year of the work’s first publication (if published).

Do I need to place a copyright notice on my website?

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The use of copyright notice is voluntary and optional (under US law, however, for works first published before March 1, 1989, use of the copyright notice was mandatory or could have resulted in the loss of copyright protection). Although not required, a copyright notice is highly advisable to be placed on your website whenever it is launched and becomes available to the public because it confers certain benefits to the copyright owner and adds an extra layer of protection.

  • It signals the website viewer that the works on the website are protected by copyright and helps deter potential infringements.
  • In the event that your copyright on the website is infringed and you sue, it acts as evidence of willful infringement and defeats an infringer’s defense of “innocent infringement,” which may help you win greater damages.
  • It identifies the copyright owner and provides contact information for permission requests.

It is common and sufficient to place one copyright notice at the bottom of  the website homepage. You are perfectly free to include a notice on every single page.

Form of copyright notice

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A copyright notice generally consists of three elements:

  • The copyright symbol or word: the symbol © ((the letter C in a circle), the word “copyright,” or the abbreviation “Copr.”  It is recommended to use the © symbol because the words “copyright” and “Copr.” are not recognized by some jurisdictions while your website can be accessed all over the world.
  • The year of the work’s first publication. While not necessary, it is common practice to use a date range (e.g., 2020-2022) to ensure that all of the current and previous contents on the site are encompassed. 
  • The name of the copyright owner.

When you put all three together, you will get a valid copyright notice that looks like this: © 2023 IACC.

Bad-Faith Copyright Registration

In light of China’s voluntary copyright registration system, both the CPCC and local Copyright Bureaus conduct a primarily formal examination to assess the completeness and adherence to the formality requirements of an applicant’s submitted materials. However, a substantive examination to determine the eligibility of a work for registration is lacking. Exploiting this aspect of China’s copyright registration system, unscrupulous entities submit false application materials, register others’ copyrighted works, and easily acquire a certificate of copyright registration. Subsequently, these certificates are deceptively used to mislead external parties and consumers.

Prevalence of bad-faith copyright registrations on E-commerce platforms

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In recent years, the deceptive practice of bad-faith copyright registrations has fueled the proliferation of fake products on e-commerce platforms. E-commerce platforms, which often mandate intellectual property certificates for sellers, inadvertently become conduits for the misuse of bad-faith copyright certificates to deceive the system. Malicious online sellers take advantage by registering third-party trademarks or brand logos as copyrights and presenting these acquired certificates as required intellectual property documentation to operate on e-commerce platforms. This results in consumers unknowingly purchasing counterfeit products, causing reputational damage and inflicting economic harm on the true right-owners.

Furthermore, armed with bad-faith copyright certificates, these unscrupulous sellers exacerbate the issue by filing malicious “infringement” takedown notices against legitimate sellers and distributors on e-commerce platforms. This malicious tactic not only disrupts online marketplaces but compounds the challenges faced by true right-owners, potentially leading to unwarranted listing removals and legal complications.

How to cancel a bad-faith copyright registration?

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Canceling a bad-faith copyright registration in China involves a stringent process. According to current CCPA requirements, the true rights owner must provide an effective judicial judgment or administrative penalty decision, proving that the recorded copyright owner in the registration certificate is not the actual copyright owner. Other documents and evidence, such as proof of ownership or copyright registration in other countries, may not be sufficient to cancel the certificate of copyright registration for the work.

For SME right owners, combating bad-faith copyright registrations can be a complex and costly endeavor. Obtaining a favorable judicial decision through litigation or an administrative penalty decision through administrative action is often time-consuming and economically burdensome. As a preventive measure, SMEs are advised to proactively register valuable copyrights in China as soon as possible. Timely copyright registration not only acts as a cost-effective protective measure but also simplifies discussions regarding the true ownership of the copyright, especially on e-commerce platforms.

Protecting Works of Applied Art through Copyright

Works of applied art refer to artistic designs created for practical objects in everyday use, including industrial designs, fashion designs, furniture designs and more. This term is used to distinguish applied arts from fine arts, the latter being those that produce objects with no practical use beyond providing aesthetic appeal. Consequently, works of applied art exhibit two fundamental characteristics—utility and artistic expression. In China, current intellectual property laws primarily protect works of applied art through two domains: patent law and copyright law.

A Dual Approach with Design Patents and Copyright

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Generally speaking, works of applied art in China are primarily covered by design patent protection. Design patent refers to a new design of the shape, pattern, or a combination thereof, as well as a combination of the color, shape and pattern of a product, which creates an aesthetic feeling and is fit for industrial application. In essence, industrial design involves visually attractive designs tailored for industrial products, capturing the attention of consumers. As consumer demands increasingly favor aesthetically pleasing yet industrially practical products, the artistic quality in the appearance of industrial products has gained prominence, opening up avenues for copyright protection.

In addition to pursuing a design patent, SME rights owners can safeguard their works of applied art through copyright, both as an independent right and as an additional layer of protection for an object covered by a design patent. 

  • Copyright and design patents serve two distinct functions: copyright protects the creative expression of an idea, whereas a design patent protects the appearance and  aesthetic features of a useful article.
  • Unlike patents, copyright ownership automatically applies once an original work is created, with no mandatory registration (although strongly recommended). 
  • In most cases, creators automatically enjoy copyright protection in all member countries of the Berne Convention, overcoming the territorial limitations of patent rights. 
  • Another crucial aspect concerns the duration of protection. Copyright protection spans the author’s lifetime and extends for 50 years after their death, while design patents have a relatively short duration of 15 years from the application date.

Copyright Protection for Works of Applied Art

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To clarify, the types of works specified in the Copyright Law of China do not encompass works of applied art, and relevant regulations concerning copyright do not explicitly stipulate the protection of copyright for works of applied art. In judicial practice, works of applied art must meet three conditions to be eligible for protection as “artistic works” under the Copyright Law.

The first condition necessitates that the artistic aesthetics of works of applied art must be original. The second condition requires that the practical function and artistic aesthetics of works of applied art must be capable of independent existence—meaning, for copyright protection to apply, the artistic component should be able to exist physically or conceptually independently of the practical component. The third condition mandates that works of applied art must attain a certain level of artistic creativity, meeting the specific requirements of artistic works and necessitating works with aesthetic significance. In other words, if a work of applied art lacks the required artistic level, typical of what an artistic work should possess, it should not receive copyright protection. This criterion is established because works of applied art can generally apply for design patents, which have a relatively low requirement for aesthetic qualities. It is foreseeable that if copyright protection is given to all less aesthetically pleasing designs, creators will no longer have the incentive to apply for design patents, potentially causing the system of design patents to collapse.

Moreover, copyright can protect the images of works of applied art, such as photographs featured in product manuals and catalogs, as well as marketing materials on official websites and social media. In instances where counterfeit items are offered for sale, especially online, they often use these copyright-protected images. Copyright, therefore, serves as a valuable tool, allowing for a quick and straightforward approach to addressing infringement on e-commerce platforms through the notice and takedown procedure.

Types of Patent Rights in China

A copyright notice is a notice placed on a work to inform the public the work is protected by copyright law, the copyright owner of the work, and the year of the work’s first publication (if published).

Patents for inventions and utility models

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An “invention” refers to any new technical solution relating to a product, a process or an improvement thereof.  A “utility model” refers to any new technical solution relating to a product’s shape, structure, or a combination thereof, which is fit for practical use. 

To get the granted patent right, an invention or a utility model must possess novelty, inventiveness and practical applicability.

  • The Chinese Patent Law adopts the absolute novelty standard.
  • Inventiveness is similar to the European inventive step and the U.S. obviousness standard.
  • Practical applicability means that the invention or utility model can be made or used and produce effective results.

Compared with inventions, utility models require less stringent criteria, have a simpler procedure, and have a shorter protection term. Utility models are also called “mini inventions” in China.

  • To meet the inventiveness requirement, an invention must have prominent substantive features and represent notable progress, while a utility model has a lower standard of having substantive features and representing  progress.
  • An application for an invention requires a substantive examination procedure to validate patentability, whereas an application for a utility model does not – the patent right for a utility model will be granted if no cause for rejection is found after the preliminary examination.
  • An invention patent has a protection duration of 20 years from filing, whereas a utility model patent has a duration of 10 years from filing.

Because the registration process of utility models is often simpler and faster, startups and SMEs who wish to protect their innovations and creations in China can seek protection under utility models to get patent rights quickly and economically. For the same invention, it is common for an applicant to apply for both a patent for utility model and a patent for invention on the same day and obtain a utility model patent first. However, if later an invention patent is granted, the applicant must abandon the active utility model patent before an invention patent for the same invention can be issued. 

Patents for Designs

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A “design” means a new design of the shape, pattern, or a combination thereof, as well as a combination of the color, shape and pattern of the entirety or a portion of a product, which creates an aesthetic feeling and is fit for industrial application. 

To get the granted patent right, a design must possess novelty and distinctive features, and may not conflict with the lawful rights that have been obtained by any other person prior to the date of application.

  • Design patents provide exclusive use of the aesthetic features of a product. Although it must be novel, a design does not have to look good – it only has to have features that can be observed through a person’s eyes alone.
  • Like utility models, an application for a design does not require a substantive examination procedure to validate patentability. A design patent will be granted if no cause for rejection is found after the preliminary examination.
  • A design patent has a protection duration of 15  years from filling (10 years for applications filed before June 1,  2021).

SMEs should pay attention to the difference in the protection scope between design patents and utility model/invention patents. Generally speaking, design patents protect the aesthetic or ornamental features of a product (how the product looks externally), whereas utility model/invention patents protect the functional or utilitarian features of a product (how the product functions internally). That said, you may obtain both a design patent and a utility model/invention patent for the external appearance of a product when the shape or pattern of the product has functionality. 

Patent Evaluation Report

To make up for the instability of patent rights for utility models and designs, China established a patent evaluation report system. This system not only empowers patentees to safeguard their rights and initiate infringement proceedings but also serves as a deterrent against potential misuse of unexamined patent rights.

What is a patent evaluation report?

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Because patent applications for utility models and designs may be granted right after preliminary examination, utility model patents and design patents are deemed very unstable due to the lack of substantive examination. 

At the request of the patentee or interested parties, a patent evaluation report is a thorough assessment made by the China National Intellectual Property Administration (CNIPA) to determine if a particular design or utility model fits the granting conditions that are set by the Chinese Patent Law and Implementing Regulations (i.e., a comprehensive retrieval of the patentability of the requested patent). 

The request fee for a patent evaluation report is 2400 CNY. The CNIPA will compile a patent evaluation report within two months of receiving the qualified request.

Effects of the patent evaluation report

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The patent evaluation report provides a definitive conclusion regarding the patentability of the requested patent. There are three types of findings – the patent does not meet all the granting requirements, partially meets the granting requirements, and fully meets the granting requirements  (referred to as a positive report).

A positive report can be used as proof in courts as well as at local patent offices to review when there are disputes related to patent infringement. Moreover, obtaining a positive patent evaluation report is a prerequisite for online enforcement in China when dealing with complaints concerning utility models or design patents. E-commerce platforms such as Alibaba require patentees to provide a positive patent evaluation report issued by CNIPA when submitting a complaint.

A patent evaluation report is a form of evidence but not a legal decision. Therefore, if the requested patent is deemed to lack certain granting conditions based on the evaluation report’s findings, it does not automatically invalidate the patent for the utility model or design. Under certain circumstances, with a detailed strategy and careful analysis, patentees can still prevail in invalidation and patent infringement cases, despite non-positive conclusions. 

Trademark Registration in China

Trademarks are territorial intellectual property rights, with a separate presence in each sovereign territory where they are registered or legally recognized. To safeguard the integrity of your brand identity in the Chinese market, it is crucial to register your trademark in China for protection.

Trademark Application

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An applicant must file a trademark application directly with the China National Intellectual Property Administration (CNIPA). The application form and other relevant documents can be found at https://sbj.cnipa.gov.cn/sbj/sbsq/. For national registration in China, the application must be written in Chinese.

Foreign applicants intending to apply for trademark registration and handle other trademark-related matters in China must authorize a legally established trademark agency to act on their behalf. Therefore, if you do not have residency or a place of business in China, you must submit your trademark applications to CNIPA through a Chinese trademark agency.

Examination Procedure

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Upon receiving a new application, CNIPA will conduct both a formality examination (e.g., checking adherence to the required format, completeness of documents, and proper signatures/stamps) and a substantive examination (e.g., assessing the trademark’s distinctiveness, similarity to existing trademarks, and potential conflicts with existing rights). If the application successfully passes both examinations without requiring any additional actions, the trademark will be preliminarily approved and published in the official Trademark Gazette for opposition purposes. If no oppositions are raised within the 3-month opposition period, the trademark application will proceed to registration, and a registration certificate will be issued. In general, CNIPA’s internal examination is expected to be completed within nine months.

The official public Trademark Gazette and CNIPA’s official trademark database are accessible online at https://sbj.cnipa.gov.cn/sbj/sbcx/. You can use them to search for existing trademarks and their status.

 

How to Contest a Trademark in China?

Once your trademark is officially registered, it becomes a valuable asset for your business. Vigilant monitoring and protective measures are of paramount importance. However, the situation can become challenging if you discover that someone is attempting to register a trademark you wish to prevent, and it’s even worse when an unwanted trademark is already successfully registered. In such instances, opposition, invalidation, and non-use cancellation serve as vital tools for rights owners to contest unwanted trademarks and safeguard brand integrity.

Opposition

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When you come across a trademark filing that you believe infringes on your prior rights, you have the opportunity to initiate an opposition with the CNIPA to request the refusal of its registration. It’s crucial to file this opposition within three months following the official publication of the trademark in the Trademark Gazette. If you fail to oppose within the time period or your opposition is unsuccessful, the trademark will be registered.

Invalidation

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In the event that your opposition is not successful, or if the unwanted trademark is already registered by the time you discover it, the next step is to file an invalidation request with the Trademark Review and Adjudication Board. It’s important to note that trademark invalidation carries a five-year statutory limitation. However, requests based on bad-faith registration and those initiated by owners of well-known trademarks are exceptions to this limitation, enabling you to take action even after the five-year mark.

Non-use cancellation

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One other approach for addressing unwanted registered trademarks is through non-use cancellation. If a trademark owner fails to use their trademark in commerce for three consecutive years, you will have the option to request its cancellation. Upon receiving a cancellation request, the CNIPA provides the trademark owner with a two-month response period to substantiate their actual use of the trademark. Non-use cancellations can be relatively successful in tackling marks that appear to have been obtained in bad faith and are not genuinely used.

First-to-File System and Bad-Faith Fillings

China operates under the “first-to-file” system, where the party that first files a trademark application is typically granted rights to that trademark, regardless of prior use or actual usage. A significant challenge faced by many foreign entities in China, especially SMEs, is the issue of bad-faith trademark filings. This practice involves registering trademarks with the intent to exploit the established reputation of a brand, often through third parties who “squat” on foreign brand names or trademarks with which they have no genuine association, thereby preventing legitimate rights holders from entering or expanding in the Chinese market.

Tackling Bad-Faith Fillings

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At the legislative level, the 2019 amendments to China’s Trademark Law have substantially strengthened trademark protections. These amendments specifically target bad-faith filings and registrations, expressly stating that trademarks filed without a genuine intent to use shall not be registered. Moreover, trademark authorities are empowered to ex officio reject and invalidate bad-faith filings and registrations, and the CNIPA has taken assertive measures against these types of trademarks.

Legitimate rights holders and interested parties can initiate oppositions and invalidations against trademarks believed to have been obtained in bad faith. The determination of bad faith takes into account various factors, including, but not limited to:

  • A large number of trademark applications filed within a short period, covering a wide range of classes of goods and services beyond the business scope.
  • Unreasonable demands for high transfer fees, license fees, or infringement damages.
  • Misleading marketing and advertising that confuses the public.
  • Imitation or copying of a significant number of distinctive trademarks with established market recognition and reputation.
  • Third-party applicants knowingly or having reason to know about an established trademark due to a business relationship but still attempting to register it.

However, the determination of bad faith is made on a case-by-case basis, which can be a challenging process, and the evidentiary burden is high. Under China’s “first-to-file” system, it is always crucial for businesses to register their trademarks as early as possible to secure exclusive rights. Failure to do so may result in other parties registering identical or similar marks, leading to disputes and the erosion of the brand identity.

New Measures Proposed in 2023 Draft Amendments

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In 2023, China released draft amendments to the Trademark Law for public comment. These amendments encompass significant changes aimed at combating bad-faith trademark filings. Key changes include a requirement to submit a statement of use every five years after registration. According to the provision as currently drafted, trademark owners would be obligated to file a statement of use or provide justification for nonuse to the CNIPA every five years. Failure to timely or properly submit a statement or justification will result in the cancellation of the trademark. The draft also outlines the establishment of a mandatory transfer mechanism for trademarks registered in bad faith, enabling legitimate brand owners to request the transfer of such trademarks under certain circumstances.

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