Protecting Rights Holders Since 1979
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:
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 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.
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).
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.
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 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).
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.
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.
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.
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.
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