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” »

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” »

Back to the Basics Series: Protecting Trade Secrets in China

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fgjNearly all businesses in all industries and sectors possess trade secrets. Trade secrets are a valuable and highly useful form of intellectual property that are nevertheless often undervalued and overlooked by their owners. This is not least the case in the service sector where the relative value of trade secrets as intangible assets can be extremely high. For example, a logistics firm may not hold any patents or few trade marks and substantial copyrights, but the value of its operations could heavily derive from information contained within client lists and standard procedures.

A considerable advantage for trade secrets is that unlike some other forms of IP rights, such as patents and copyrights that have a finite term, trade secrets can theoretically enjoy an infinite term of protection so long as the trade secret remains just that – a secret. The main difference between protecting something by patent or as a trade secret is that, while technical information is publicly disclosed in patents, it is kept away from the public eye in trade secrets. A trade secret can last forever as long as the confidentiality measures that protect it continue to work. An invention patent typically expires after 20 years.

On the other hand, legal protection of trade secrets is easily lost. Once the information becomes public information, it no longer enjoys any legal protection. As a result, prevention is the golden rule when it comes to protecting your trade secrets, because once your secret is out, there is usually very little that you can do about it. China, like most other countries, provides a legal framework for the protection for trade secrets, and the law provides for remedies in the event that your trade secrets are unlawfully disclosed. Part one of this two part article will describe what constitutes a trade secret and outline the measures you can take to protect them. Continue reading “Back to the Basics Series: Protecting Trade Secrets in China” »

Tips for Protecting your Brand in South-East Asia

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Business in South-East Asia – the facts and figures

Economic growth in South-East Asia has been, and is likely to remain strong. As its Thailandeconomies have shifted from exports to a broader base of growth drivers, both consumption and investment in the region has soared[1].

Between 2015 and 2019, it is predicted that the ten ASEAN nations (Indonesia, Malaysia, the Philippines, Singapore, Thailand, Brunei Darussalam, Cambodia, Laos, Myanmar and Vietnam) will experience 5.6% GDP growth on average, with business fueling much of the growth in the region[2].

This region is increasingly attractive for international trade and foreign investment, due to rising domestic demand for foreign products. Among the most promising sectors for European companies in South-East Asia are electronics, automotive components, mechanical engineering (machinery), IT/software, food processing and leisure and tourism. Continue reading “Tips for Protecting your Brand in South-East Asia” »