Bad Faith Trade Mark Registrations in China

Prior trade mark registrations, also called ‘bad-faith registrations’, are a significant problem that many European companies encounter in China. This process commonly involves a Chinese company first registering the trade mark of a foreign company in China with the express intention of selling it back to the foreign company at an inflated price. Finding out that a Chinese company has registered a bad faith trade mark is one of the biggest complaints of European Small and Medium Enterprises (SMEs) trying to enter the Chinese market. These prior registrations can limit the foreign company’s freedom to operate by restricting its ability to enter the China market or even to source goods from China.

As an example, a Scandinavian SME used a Chinese factory to make its goods for export. The Chinese supplier registered the Scandinavian company’s trade mark in China and engaged China’s customs to intercept export goods bearing the trade mark, thereby disrupting the Scandinavian company’s business. Continue reading “Bad Faith Trade Mark Registrations in China” »

Protect your Product’s Design in China: Know before You Go

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shutterstock_385731427Product’s design is often one of the most important aspects of a consumer product – the way companies shape and package their goods plays a crucial role in customers purchasing decisions. Distinctive and easily recognizable visual design carries the identity and reputation of a particular brand across the globe, including the vast Chinese market. Expanding into China represents an exciting opportunity for European SMEs to reap additional profits, but how can enterprises simply and inexpensively protect their designs? The most common types of intellectual property relevant to the design of the goods themselves are design patents and copyright, while packaging can be protected in China under additional types of IP law, such as the Trademark Law, the Patent Law, the Copyright Law and the Anti-unfair Competition Law.

Given the variety of options available, it is recommended to carefully plan a strategy of combined and layered protection through registration of IP. Depending on your specific business and your specific budget needs, your SME may choose to opt for only one kind of registration or may choose to combine different registrations as a bundle of rights for more comprehensive protection. While products themselves and technical features of packaging can be protected as utility models or invention patents, packaging and aesthetic features of industrial products are most commonly protected under design patent registration.  Design patents include any of the following external features of a product that are rich in aesthetic appeal and are fit for industrial application: Continue reading “Protect your Product’s Design in China: Know before You Go” »

IPR Protection for South-East Asia Knowledge Market

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MP900386713Many European SMEs may be under the impression that they do not conduct R&D in South-East Asia, because they do not have a research facility there. The likelihood is however that in reality, a high proportion of them engage in activities which fall under at least one of the terms: research or development. An example of R&D activity might include an SME entering into a contract with a local company to use their engineers to develop a prototype into a commercial product. The future of R&D looks promising in South-East Asia, as the rapidly growing market becomes more accessible to franchisors around the world and as the legal environment is showing promising signs of improvement. As an example, the number of foreign franchises in Indonesia has been growing around 13% on a yearly bases since 2012. Nevertheless, it is still vital to have an IP protection strategy when conducting R&D activities in South-East Asia.

Protecting IP with registrations

SMEs can protect their valuable R&D through patents, design patents, industrial designs, trade secrets and trade mark registration. SMEs should keep in mind that patents acquired in Europe do not give automatic protection in South-East Asian countries and therefore, if a European SME is planning to create any new intellectual property in South-East Asia, it is highly recommended to apply for invention patents or design patents in the South-East Asian country, that you seek to do business in. Early protection is the key. The average time for getting a certification varies between 3-8 years for invention patent and between 12 months to 3 years for design patents depending on the country of reference.  Continue reading “IPR Protection for South-East Asia Knowledge Market” »

Industry Spotlight: IPR Strategies in China for Cleantech Industry

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MC900437625China is the fastest growing market for wind and nuclear power generation, and is investing heavily in exploring alternative, renewable means of addressing its immense energy needs. With a large potential cleantech market, and strong government support for the development and adoption of new clean technologies, China presents great opportunities for European cleantech SMEs.

China’s large market potential means that cleantech businesses cannot risk losing a strategic foothold in China by waiting to act. However, cleantech businesses that enter China need to understand that while good execution, effective management, and access to financing is critical to maintaining a competitive advantage, protecting good technology is also equally critical. Although technology transfer can be structured in a way that minimises IP risk, additional preparation and measures directed at the IP environment in China need to be considered as well.

How IP fits into an overall business strategy will depend on whether the firm is a start-up or a growth business, and also whether the technology itself is new and untested in the market, or mature and ‘off-patent’ (technology that is no longer protected by patent). Different businesses will use IP to achieve different objectives, such as to maximise revenue-generation by monetising their IP portfolio through licensing, increase opportunities for partnerships and cross-licensing, or bar new market entrants. Continue reading “Industry Spotlight: IPR Strategies in China for Cleantech Industry” »

Back to the Basics Series: Protecting Trade Secrets in China Part II

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ConfidentialLast week we explored Chinese laws on trade secrets and discussed some measures that the SMEs can take to protect their trade secrets. This week we get more practical and discuss how the SMEs can use non-disclosure agreements and confidentiality agreements to protect their trade secrets. We will also take a look at the measures the SMEs can take, once the trade secrets have been illegally revealed.

Nearly all businesses in all industries and sectors possess trade secrets. Trade secrets are a valuable and highly useful form of intellectual property right (IPR). As the name suggests however, trade secrets are a non-registrable form of intellectual property; they only enjoy legal protection as long as they are not disclosed publically. It is therefore crucial to prevent your trade secrets from being divulged in the first place. Once out, there is usually very little you can do about it. This concluding piece of a two-part article describes measures you can take to help ensure trade secrets aren’t lost through employees and third parties as well as options available to you should your secrets be disclosed. Check the last issue of Eurobiz for part I of this series which outlined how to identify a trade secret and the physical, technical and contractual barriers you can put in place to protect them.  Continue reading “Back to the Basics Series: Protecting Trade Secrets in China Part II” »