Brand protection in china: • Introduction of Applicable Legislations • Selection of Manufacturers • Trademark Registration • Trademark, Copyright and Patent Protection • Marketing in China • Trademark Licensing • Actions against Infringements

1. BRAND PROTECTION
IN CHINA
BY: HENRY LIAO
MANAGING PARTNER, SCHINDERS LAW
MAY 2014

2. INDEX
• Introduction of Applicable Legislations
• Selection of Manufacturers
• Trademark Registration
• Trademark, Copyright and Patent Protection
• Marketing in China
• Trademark Licensing
• Actions against Infringements

3. INTRODUCTION OF APPLICABLE
LEGISLATIONS
Main sources of laws and regulations on trademark protection in China:
• Laws
• Trademark Law (new amendments were effective from May 1, 2014)
• Copyright Law (new amendments were effective from April 1, 2010)
• Patent Law (new amendments were effective from October 1, 2009)
• Anti-Unfair Competition Law (effective from December 1, 1993)
• Administrative Regulations
• Implementation Regulations for Trademark Law (new amendments
were effective from May 1, 2014)

4. INTRODUCTION OF APPLICABLE
LEGISLATIONS
• Judicial Interpretations
• The Supreme Court’s Interpretations on the Application of
Legislations in Relation to the Trial of Trademark Disputes
(effective from October 16, 2002)
• Regulations by the Supreme Court on the Trial of Disputes
Arisen from Conflicts between Registered Trademark, Trade
Name and Prior Rights (effective from March 1, 2008)
• The Supreme Court’s Interpretations on the Application of
Legislations in Relation to the Trial of Unfair Competition
Disputes (effective from February 1, 2007)

5. SELECTION OF MANUFACTURERS
• To search for an appropriate manufacturer, you may refer
to the following websites:
• www.made-in-china.com (English and other languages
available)
• www.dhgate.com (English and other languages available)
• www.1688.com (Chinese)
• www.alibaba.com (English and other languages available)
• www.aliexpress.com (English)

6. SELECTION OF MANUFACTURERS
Most of these platforms provide detailed information of the
suppliers, such as their contact information and list of
products.
Some platforms verify the bank accounts, corporation
certificates or personal ID of the suppliers. You may also
check out their credit rating and the comments by their
previous consumers.

7. SELECTION OF MANUFACTURERS
• Screenshot from www.made-in-china.com

8. SELECTION OF MANUFACTURERS
• Screenshot from www.made-in-china.com

9. SELECTION OF MANUFACTURERS
• Screenshot from www.alibaba.com

10. SELECTION OF MANUFACTURERS
• To know more about certain manufacturers, you may consult with
relevant associations or departments for further references:
• Industrial associations
• Qualifications and certifications
• Statistics (share of market)
• Complaints and disputes record
• AIC (Administration for Industry and Commerce)
• Establishment files (address, share holders, registered capital, etc.)
• Business scale and scope
• Annual inspections

11. SELECTION OF MANUFACTURERS
• Screenshot from the website of Guangzhou Electronic
Industrial Association (located in Guangdong Province,
China)

12. TRADEMARK REGISTRATION
The first thing you have to do to protect your IP in China is to have
them registered with authority.
According the P.R.C. Trademark Law, the following elements or their
combination could be registered as trademarks:
• Chinese Characters
• Photographs
• Letters
• Sounds
• Numbers
• 3D logos
• Color combinations

13. TRADEMARK REGISTRATION
Based on our experience, trademark registration is the most
economic and effective way to protect your brand. A prior
registered trademark is a strong support for you in the future
adversarial trademark issues. Therefore, we suggest you to:
• Apply for registration in advance (before or at least
simultaneous with any of your market or promotion plan).
• Apply for all your trademarks, logos, trade name (including
acronyms) and even slogans.
• Apply for registration in multiple categories covering similar
goods/services.

14. TRADEMARK REGISTRATION
• Example: Some of the “Haier” trademarks registered by a
domestic company (Qingdao Haier Investment
Development Co., Ltd.)
Class 1 4534761 HAIER Class 8 4534748 HAIER
Class 2 4534762 HAIER Class 9 4534749 HAIER
Class 3 4534763 HAIER Class 10 4534750 HAIER
Class 4 4534764 HAIER Class 11 4534751 HAIER
Class 5 4534765 HAIER Class 12 4534752 HAIER
Class 6 4534746 HAIER Class 13 750298 HAIER
Class 7 4534747 HAIER Class 14 4534754 HAIER

15. TRADEMARK REGISTRATION
Class 15 4534755 HAIER Class 22 4534742 HAIER
Class 16 4534736 HAIER Class 23 4534743 HAIER
Class 17 4534737 HAIER Class 24 4534744 HAIER
Class 18 4534738 HAIER Class 25 4534745 HAIER
Class 19 4534739 HAIER Class 26 4534726 HAIER
Class 20 4534740 HAIER Class 27 4534727 HAIER
Class 21 4534741 HAIER Class 28 4534728 HAIER

16. TRADEMARK PROTECTION
To prevent your suppliers in China from applying for registration of
trademarks identical or similar to yours, you need to preserve relevant
evidence for proof of his awareness of your trademarks and his
application in bad faith. Such evidence may include:
• Business contracts;
• Purchasing;
• Invoices; and
• Letters and Emails.

17. TRADEMARK PROTECTION
If you do not intend to distribute your products in China at
present, to prevent your suppliers in China from selling your
products in China, we suggest that you:
• Prepare a good contract (including provisions such as return
of templates, prohibition from keeping surplus products and
deal with the moulds after the production); and
• Monitor on e-commerce platforms for non-authorized use of
your trademarks and non-authorized distribution of your
products.

18. TRADEMARK PROTECTION
Website monitoring is a cost-effective way to protect your
brand.
Except for the websites mentioned in the first section, we
have the following popular e-commerce platforms:
• www.tmall.com;
• www.taobao.com;
• www.jd.com; and
• www.amazon.cn.

19. COPYRIGHT PROTECTION
It is not mandatory to register you works so that to enjoy
copyrights. Nonetheless, registration of you works with
authority may have several advantages:
• Publicize your copyright. Lessen your burden of proof in
relation to ownership of the copyright in the courts;
• Prohibit someone else from using your works on dissimilar
goods/services;
• Be used for evaluation of intangible assets.
Copyright registration is administrated by Copyright Protection
Center of China.

20. COPYRIGHT PROTECTION
Comparison between Trademark Protection and Copyright
Protection
Trademark Protection Copyright Protection
Acquisition of
Rights
Registration. Automatic Protection.
Period of
Protection
10 years. Needs
application for
extension.
Lifetime and 50 years
after the death of the
author.
Scope of
Protection
Same or similar
goods/services.
Including dissimilar
goods/services.
Therefore, some people also apply for copyright registration for their
trademarks, since the Trademark Law prohibits trademark registrations
that infringe upon someone else’s prior rights (including copyrights).

21. COPYRIGHT PROTECTION
Case: Trademark Application vs. Copyright
Registration No.：1455854
(Status: Invalid
Trademark.)

22. PATENT PROTECTION
Patent application and registration are administrated by
Patent Office under State Intellectual Property Office of P.R.C.
Patents protected under Chinese laws include:
• Inventions;
• Utility model patents;
• Appearance design patents.

23. PATENT PROTECTION
Comparison between Trademark Protection and Appearance Design Patent
Protection
Trademark Protection Appearance Design
Patent Protection
Application Preliminary examination
followed by publication
and opposition period.
Easy. No material
examination.
Period of
Protection
10 years. Needs
application for extension.
10 years. Not
extensible.
Scope of
Protection
Same or similar
goods/services.
Limited to the product
as shown in the picture
in the certificate.

24. PATENT PROTECTION
Case: Trademark Application vs. Appearance Design Patent
Registration No.：1387591
(Status: Trademark application earlier and approved)

25. MARKETING IN CHINA
If you intend to bring your products to Chinese market, there
are various approaches you may choose:
• To set up branches/subsidiaries in China;
• To engage trading companies as distributors/agents;
• To promote and sell directly online.

26. TRADEMARK LICENSING
Under Chinese laws, it is not mandatory for trademark Licensing
agreements to file with the Trademark Office so as to come into
effect.
Nonetheless, it is recommended or sometimes required to file
your trademark Licensing with authority.
For example, the bank may require you to provide a recordal
certificate when you request the royalty to be wired abroad.
Or, the licensee may want to file and publish the trademark
Licensing so that to protect their rights and interests against
third parties.

27. ACTIONS AGAINST INFRINGEMENTS
- Evidence Preservation
Before any legal actions be taken against any suspected
infringements, it is important to have the evidence of
infringing activities preserved and notarized.
• Products bearing infringing trademarks;

28. ACTIONS AGAINST INFRINGEMENTS
- Evidence Preservation
• Brochures, posters or other commercial documents;

29. ACTIONS AGAINST INFRINGEMENTS
- Evidence Preservation
• Websites and domain names:

30. ACTIONS AGAINST INFRINGEMENTS
- Legal Actions
With the preserved and notarized evidence of infringing
activities, you may proceed with one or more of the following
legal actions:
• Cease-and-desist letters
• Arbitrations (especially in domain name cases)
• Lawsuits (trademark infringements and/or unfair competitions)
• Administrative approaches
• Criminal charges

31. ACTIONS AGAINST INFRINGEMENTS
- Cooperation with Authorities
To protect your trademarks from infringement, cooperation
with relevant authorities is important.
• Cooperation with AIC
• Freeze and seize infringing products;
• Freeze and seize equipment and apparatus used by the
infringers to produce infringing products;
• Revoke or alter the trade names that infringes upon
trademark rights.

32. ACTIONS AGAINST INFRINGEMENTS
- Cooperation with Authorities
To protect your trademarks from infringement, cooperation
with relevant authorities is important.
• Cooperation with Customs
• Filing your trademark registration certificates with customs;
• Report to customs and embargos the infringing products.

33. Q & A
THANK YOU!
Henry Liao
Managing Partner
Schinders Law
Tel: (86 20) 3810 3687 (Direct)
Fax: (86 20) 3810 3692
Cell: (86) 18666095410
Email: henry.liao@schinderslaw.com