A primer for intellectual property registration in China
Trademark
The main problem a foreign entity faces in China is that it is a so-called “first to file” country. This means that the first company to apply for trademark registration, whether that company is Chinese or foreign, will obtain registration and can prevent others from using the trademark. In some instances, a foreign company has entered the Chinese market not only to find a competitor that has registered the trademark it owns elsewhere in the world, but that the competitor is seeking to enforce it against them and demanding payment to transfer the trademark.
Chinese law does provide grounds for opposing a filed application or canceling a registered trademark.?However, procedures can be costly and time-consuming, and to succeed it is often necessary to prove that the initial application was made in bad faith. Being the first to file for registration is always the cheapest and most efficient way to secure a trademark and prevent others from encroaching on your patch.
Applications for trademarks should be filed with the China National Intellectual Property Administration (CNIPA) through a recognized agent. The cost of filing is low, but the benefits are substantial.
China follows the “NICE Classification” system and applications are usually made on a per-class basis. Therefore depending on the range of goods and services a trademark is intended to be used for, the applicant may have to file several independent applications.
The following simple steps will help to safeguard company trademarks:
Copyright
In China, copyright arises automatically and entitles the creator of an original work to protection if the work was first published or originated in China. As China is a signatory of the Berne Convention for the Protection of Literary and Artistic Works 1979, foreign creators are offered the same protection for any work created outside of China.
Copyright lasts for a period of fifty years from the date of publication if the author is a company. Individual ownership of copyright subsists for the author’s life plus fifty years.
It is possible to record copyright in China and this can be done at the National Copyright Administration of China. To obtain a copyright certificate, companies or individuals must submit evidence of ownership and the date of creation. Recordal can prove very useful if a dispute arises over ownership. There is a small cost to obtaining it depending on the nature of the copyrighted work — but the comfort it provides is well worth the investment.
One anomaly in China’s copyright law relates to copyright arising during the course of employment. In China, if a work is created during the course of employment, the copyright will generally belong to the employee. However, for the two years from the creation of the copyrighted work, the employee cannot license the copyrighted work without the consent of the employer. A foreign company may seek to alter this position by including specific copyright ownership provisions in its employee contracts.
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Patent
The Chinese patent system is also a “first to file” system and patent applications may be filed in the name of a corporation or an individual. There are three types of patents in China:
The design patent is similar to a registered design in Europe and the utility model is what is sometimes called a “mini-patent” — similar to its German equivalent and requiring a lower level of inventiveness.
Of the three types of patent, only the invention patent will undergo a substantive examination procedure by the CNIPA. Generally, it takes around three years for an invention patent to be granted, while utility and design patents will take one year or less. It is possible to file for both invention patents and utility model protection at the same time and then drop the utility model protection once the invention patent has been granted.
Patent applications can be originated at CNIPA, as with any other national office. China is also a signatory to the Patent Cooperation Treaty (PCT) and consequently, PCT applications can be converted into Chinese patents by undergoing the “national phase” through CNIPA in accordance with the usual PCT procedures.
Chinese law also provides grounds for invalidating a registered patent. China adopts the “absolute novelty” standard, which means a patent can be invalidated by prior publications of patents anywhere in the world. However, procedures can be costly and restrictions are set for evidence that is admitted by CNIPA. As with trademarks, the better option is to file as soon as possible to avoid unnecessary costs and delays.
It should be noted that a patent can lapse if the patent annuity is not paid on time. So maintaining and updating a full register of a company’s IP rights is as important in China as in other markets.
(By Dr. Jian Xu. Last updated: Apr 2024)
- This article is an excerpt from my E-book, '365 Intellectual Property Tips for China: A Comprehensive, Strategic, and Practical Guide for Legal Professionals' available on Amazon. You are welcome to check it out (and read it for free if you are a Kindle Unlimited subscriber).
- Alternatively, you may check out my China Intellectual Property Series (4 book series) , which consists of my China Patent, Trademark, and Copyright Law Handbooks, in addition to the above 365 China IP Tips.
- Should you have any questions on China IP, please feel free to contact me: [email protected]