Know your Territory – IP is a Territorial Right Registration in Europe Does Not Guarantee Protection in China

TrademarkIntellectual property rights are by their nature territorially limited, which means that IPR within a country are independent of any such rights existing in other countries. If you register IP rights in Europe or elsewhere, this will not provide effective protection in Mainland China, or Hong Kong, Macau and Taiwan, which also require different registration procedures. Intellectual property rights are territorial due to the fact that they are offered and governed by each country’s own legislation.

The scope of protection of IPR (in relation to the types of rights, duration of protection, territory and basic protection requirements) is in principal the same in China and Europe. However, there are some important differences which are useful to understand in order to efficiently manage your intellectual property in China.

Different Types of IP

There are three main types of intellectual property rights, which are copyrights, trade marks and patents.

  • Copyrights protect original literary, artistic, dramatic and musical works, sound recordings, films or broadcasts, but also software and databases. While you do not need to register your copyright for protection, you may voluntarily register to prove ownership in China.
  • Trade marks are, for example, brand names and logos, and they are symbols that differentiate goods and services in the marketplace. They are essential marketing tools for customers to recognise products or services. You can register trade marks either by filing an application directly at the China Trade Mark Office (domestic application).
  • Patents protect new inventions and at the same time allow inventors to profit from them. There are three different types of patents in China: invention patents, which are granted for innovations in the field of technology; utility models, which are granted for a new shape and/or structure of an object; design patents, which are granted for the original shape, pattern, colour, or a combination thereof, of an object. Foreign companies without a registered office in China must file a patent or trade mark application with the help of a local patent or trade mark attorney.

Protecting Your IPR in China

The best way to prevent IPR-related issues is to use a layered, holistic IPR protection strategy, which includes protection both by registration of your registrable rights and other methods such as contractual protection (confidentiality agreements, IP protection clauses in employee agreements) and internal security measures (limited access to certain work areas, etc).

IPR rights can be registrable and non-registrable. Registrable IP rights are territorial, which means they have to be claimed and asserted in each country individually. Registered IP in another country is not automatically recognised in China; therefore, it is strongly recommended that you register your IP assets in China before entering the market.

Furthermore, China is a first-to-file jurisdiction, which means that if you do not register your IP assets  for trade marks, patents, design and so on, Chinese competitors can register your rights in China first, leading to the possibility of you needing to buy back your own trade mark, or facing legal action or even seizure.

It is best to prevent IPR issues before they arise by carefully guarding and registering your IP assets before entering any new markets.

In simple words, the best way to protect your intellectual property rights is to protect them in every market you operate in (manufacture, sell, may move into in the future etc.). This can mean a significant, initial outlay of time and financial resources but the benefit is peace of mind that you can protect your rights no matter where you are in the world which ultimately could save you greater resources in the long run.

You need to act with awareness and follow some simple rules: do not presume that your IPR is automatically protected in China if you already have registrations in other countries and remember to register your IP filing your application before entering in the Chinese market.

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