IP Considerations for R&D in China

anatomy-1751201_1280As many European SMEs are considering having their R&D-intensive business in China, so in today’s blog post, we are taking a closer look on how to protect your inventions that require research and development in China. The article discusses the common issues relating to IP ownership and IP licensing.

Many European SMEs may not consider that they conduct any R&D activities in China because they do not have a laboratory or research facility there, but in reality, a high proportion of these companies engage in activities which fall under at least one of the terms: research or development. An example of R&D might include an SME that enters into a contract with a local company to use their engineers to develop a prototype into a commercial product or application.

Intellectual property is a critical consideration for European SMEs that come to China wishing to tap into the market potential for business growth, or the talent pool for technology development. When engaging in R&D in China, new intellectual property is being created, the rights to which need to be clearly defined from the outset to avoid disagreements later. Continue reading “IP Considerations for R&D in China” »

China’s trademark law: Evicting the squatters

Today’s blog post has been kindly drafted for us by Ms. Marie Ferey and Mr. Fabio Giacopello from HFG Law & Intellectual Property. Ms. Ferey and Mr. Giacopello use several high-profile case studies to discuss how companies can fight against trade mark squatters in China. 

Several high-profile cases show that trademark owners in China can succeed in removing squatters. Marie Ferey and Fabio Giacopello of HFG report.

When it was introduced the new Chinese Trademark Law (TML) didn’t seem tough enough against trademark squatting, but after three years of implementation we have found that the TML has many resources and provisions that can be used to stop malicious trademarks.

‘Face book’

On January 24, 2011, an individual called Hongqun Liu filed an application for registering ‘face book’ as a trademark before the Chinese Trademark Office (CTMO). It designated “vegetable canned food, potato chips” in class 29, “coffee beverage, tea beverage and candy” in class 30, and “fruit juice (beverage), iced (beverage), vegetable juice (beverage)” in class 32. The trademarks were preliminarily approved by the CTMO.

Social media platform Facebook later undertook legal action in order to invalidate the trademarks and succeeded at the Beijing No. 1 Intermediate Court. According to article 44 of China’s TML, the court stated: “If improper means are found in the examination stage of a trademark application, it is detrimental to restrain such means by cancellation of a registered trademark instead of rejecting the registration at the approval stage.”

In this case, Facebook succeeded in proving that Liu had filed multiple applications for ‘face book’ trademarks in many different classes. Besides, Liu has also registered reproductions and imitations of others trademarks with high reputation. Continue reading “China’s trademark law: Evicting the squatters” »

Protecting the Interior Design of Shops in China

6. Fashion and DesignIn today’s blog post we are taking a closer look on how European SMEs could protect the interior design of shops in China, as it is not unprecedented that even the design of your shop may get copied. You’ll  learn more about trade dress, copyright and design patent protection as viable options for protecting the interior design of your shop. 

When Brent Hoberman, founder of online interior design and furniture store Mydeco.com, made a trip to China one man was particularly keen to meet him. When they met, the man explained that he wanted to launch a web business but had no idea how to do it until he found Mydeco.com and copied it. He only wished to express his appreciation personally to Mr Hoberman.

In 2011 the residents of Kunming, a city in the South-Western region of China were delighted to find an IKEA shop there. The copycat store is an enormous, multi-level shop that sells modern IKEA-like furniture and even copies the distinctive blue and yellow branding. The residents realized it was a fake, but have little choice as the closest real IKEA is in Chongqing, 940km away.

Store layouts, colours and designs become synonymous with a brand, so imitation of a store interior is very damaging to companies. At times it is increasingly difficult to separate the real from the fake.

There is a saying in China, 山高皇帝远 (shāngāo huángdìyuǎn), which means the mountains are high and the emperor is far away, a saying that perfectly encapsulates the reason why some counterfeiting still happens in China, particularly in faraway places such as Kunming. Continue reading “Protecting the Interior Design of Shops in China” »

The CPTPP – What to Expect?

denver-business-law-firm-intellectual-propertyToday’s blog post has been kindly drafted for us by the South-East Asia IPR SME Helpdesk external expert Mr. Manh Hung Tran from BMVN International LLC, a member firm of Baker & McKenzie International. In his article, Mr. Manh Hung Tran discusses what signing the Comprehensive and Progressive Trans-Pacific Partnership means to its signatories in terms of IPR protection. 

At the November 2017 Asia Pacific Economic Cooperation Summit in Da Nang, Vietnam, the 11 countries remaining in the Trans-Pacific Partnership (TPP) took a significant step forward to finalize a new agreement now referred to as the Comprehensive and Progressive Trans-Pacific Partnership (CPTPP).

In the absence of a key player – the United States – this new cross-border deal, the CPTPP is reported to have largely incorporated the TPP on the one hand but “suspended” certain intellectual property provisions on the other hand, in hopes of reviving them when the United States re-joins the agreement at some point in the future. Thus, although the final text has not been published, it is highly likely that the CPTPP has ceased the effect of many IP-related and/or drug-specific articles that the United States rigorously promoted when the TPP was being negotiated.

In light of the above, we think that the following important issues in Chapter 18 of the TPP, which concerns intellectual property, may have been included in the list of suspended provisions of the CPTPP. Continue reading “The CPTPP – What to Expect?” »

Marking Your Territory: Choosing a Trade Mark in China

trademarkChoosing a Chinese equivalent for your brand name can oftentimes be a challenging task.  In today’s blog post we’re taking a closer look at what you need to know when choosing your trade mark in China.  We are using the famous New Balance case to offer some tips on how to choose a good trade mark in China. 

In one of the most famous trade mark infringement case, New Balance Trading (China) – the Chinese affiliate of US sports footwear brand, New Balance – was ordered by a Guangzhou court to pay RMB98 million in compensation (equivalent to approximately EUR14.3 million), and to publicly apologise to Chinese businessman, Mr Yuelin Zhou, for trademark infringement. The trade mark in question was “新百伦”, or “Xin Bai Lun”, a Chinese transliteration of “New Balance”. This case serves as a sharp reminder of how vital it is for foreign brands to register a Chinese trade mark in China, and how cutting corners may result in high financial penalties later down the line. This article takes a look at how to best choose a Chiniese name for your brand when doing business in China.

Chinese consumer culture: why choose a Chinese name?

China possesses one third of the world’s consumers and is the largest market for luxury goods in the world. Between 2010 and 2014, European Union (EU) imports to China grew by around 12% on average annually.

Taking time to carefully consider a Chinese trade mark when importing a brand to China is important for several reasons. Firstly, because foreign brands or company names are often difficult to pronounce – or carry different meanings – in Chinese. If a company fails to provide its own Chinese name or trade mark, Chinese consumers will choose their own. Secondly, in a country where each character holds its own distinctive meaning, the characters used in a foreign branded trade mark, along with the sound, tone and look of Chinese characters, can significantly impact a brand’s reputation. Continue reading “Marking Your Territory: Choosing a Trade Mark in China” »