Intellectual Property Protection In China
As intellectual property rights are valuable assets of a business, foreign investors intending to expand their business into China should ensure that their intellectual property rights, including the trade marks, trade names, logos, company images, domain names, patentable formats and digital copyright, are well protected in China.
Registration of Trade mark and Domain name
Unlike the Australian trade mark system which gives ownership of a trade mark to the first user of the mark (subject to exceptions such as honest concurrent use), China (and many Asian countries) adopts a first to file system which allows the first person who files a trade mark application to be entitled to registration and exclusive use of the mark within the territory of PRC, provided that all other registration requirements are met.
The first to file rule is however subject to some important exceptions. For example, the first to file rule will not apply if two or more applicants apply for registration of identical or similar trade marks simultaneously on the same day in respect of identical or similar goods, in which case evidence of prior use of a trade mark would be relevant. In addition, a trade mark applicant can claim right of priority if its application in China is made within six months from the date of filing its first trade mark application in another Convention Country.
Well known trade mark is another important exception to the first to file rule. The Chinese Trademark Law prohibits unfair registration and use of a mark which is identical or similar to a well-known foreign trade mark not yet registered in China, if the proposed registration and use of the mark is in respect of the same or similar goods for which the well-known mark is used. Obtaining recognition of the well-known status for a foreign registered trade mark is necessary as it entitles the holder to claim for protection of its trade mark in China or enforce its rights against unfair competition on the basis that its marks are well-known.
Registration of domain name also operates on a first to file system in China. It is therefore possible for well known brand names to be subject to cyber-squatting, which is the pre-emptive registration of famous global brand names or trade marks as domain names. If this is the case, the domain name holder may be held liable if it can be established that the registration or using of the domain names has infringed other person's existing legal rights. If a claim arises from the registration or use by a third party of a domain name which is identical or similar to a registered trade mark, there is no need for the court to determine whether the claimant's trade mark is famous or not.
Given the above, foreign investors are recommended to consider having their trade marks/logos registered with the Chinese Trademark Office before they enter the China market. If they intend to have a Chinese domain name for their website in China, they should also file a domain name application with the domain name registrar.
Stephens Lawyers & Consultants works with and have assisted clients in entering into the Chinese market including advising in relation to the business structures and protection of intellectual property.
For further information contact:
Katarina Klaric Principal Stephens Lawyers & Consultants Level 3, 530 Lonsdale Street Melbourne VIC 3000 Phone: (03) 8636 9100 Fax: (03) 8636 9199 Email: katarina.klaric@stephens.com.au Website: www.stephens.com.au All Correspondence to: PO Box 13286 Melbourne Law Courts Melbourne VIC 3000 To send your comments and feedback, please email stephens@stephens.com.auDisclaimer : This article is not intended to be a substitute for obtaining legal advice.
© Stephens Lawyers & Consultants, April 2007 - June 2009
Updated June 2009.