How to protect your Intellectual Property in China?
An article wrote for NINGBO GUIDE magazine, and published on the Vol 1, Issue 2, July 2007.
By Sun Jin(Marlow), Chinese attorney at Law, Zhejiang Xinmu Law Firm
|I. What is Intellectual Property in China?
Intellectual Property (hereafter referred to as "IP") is a generic term of legal rights enjoyed by creators of intellectual productions and owners of marks which are used in industries; it includes copyrights and industrial Intellectual properties.
According to international treaties and conventions of TRIPS and The Convention Establishing the World Intellectual Property Organization (WIPO) and so on, and PRC laws including General Principles of Civil Law and Anti-Iniquity-Competition Law, IP shall include following:
II. What are IP laws in China?
IP law is a floorboard of law criterions when regulate the society relationships which come into being during actions of creation and utilization of intellectual productions.
1. International Laws
In fact, IP's International protections is only domestic laws' protections over foreign IP, when merely domestic protection over domestic IP can not solve the IP protection problems occur in business internationally.
IP's International protection is to solve two problems: first is foreign IP owners' benefits must be respected and protected domestically, second is domestic IP owners' benefits shall be respected and protected in foreign nations.
PRC is a member of following international treaties and conventions (year of being member officially):
a. Paris Convention for The Protection of Industrial Property (1985);
2. Domestic laws
PRC started to make domestic IP laws from 80s of last century, late but rapidly. Main laws as following:
a. PRC Trademark Law, promulgated in Aug. 23, 1982, revised in 1993;
III. How to protect your IP in China?
To let your patent and trademark under protection in China, you must file your patent and register your trademark in China. Protection of IP in China shall include content of IP's protection principles under frame of international laws, IP's domestic civil law protection, IP's protection by Custom, and Administrative Disposal of IP civil disputes.
1. IP's protection principles under frame of international laws
Related treaties and conventions mainly stipulate the principle, scope and lowest standard of IP's international protection. Among them principles are most important content, as following:
1). Principle of Civil treatment;
This principle was first stipulated in Paris Convention for The Protection of Industrial Property, and is emphasized in TRIPS, which is a basic principle shall be obeyed by all WIPO members. Its meaning is, laws of WIPO members must offer citizens of other members same treatment to that of the member's own citizen, citizen of non-members can enjoy the civil treatment when meet certain conditions. Like copyright protection, when a certain citizen's writing is published first in a WIPO member nation, he/she will enjoy the civil treatment in this member nation.
2). Most-favored Treatment Principle;
All benefits, special treatments, privileges or releases offered by a member of the treaty to another party of a treaty member or non-member shall be enjoyed by other members unconditionally.
3). Transparency Principle;
All IP laws, regulations and generally-applicable awards promulgated by a treaty member shall be publicized in it's own language so that be known by all other members as well as right possessors.
4). Independent Protection Principle;
Law protections over a certain intellectual production are independent among members. A certain IP's coming into being, being announced as invalid, being terminated in a treaty member nation does not surely means same situations in another member nation.
5). Auto Protection Principle;
This is a special principle to copyright. When the writer enjoys the copyright in a certain member nation, he/she need not to perform any procedures, procedures like registering, delivering of sample and making copyright mark and so on are not pre-conditions of copyright's coming into being.
6). Priority Principle.
A citizen of a treaty member raises the application to registration of a certain invention patent, practical new model patent, appearance designing patent or trademark in the member nation firstly, and when make same application to registration to other treaty member nations in a certain time, the citizen will enjoy the priority of application date. That is, the application date in the first treaty member nation will be the date of his/her afterwards application in other member nations. The time of enjoying priority (priority limitation), for invention and practical new model patent it's twelve months, for appearance designing patent and trademark it's six months, from the date of first application.
2. IP's domestic civil law protection via litigation or arbitration
1). IP infringement
IP infringement means exertion actions of IP possessors' legal rights without authority or permission or law's gist, or encumbrance actions over possessors' exertion of their legal rights. IP infringements mainly are illegal exertion actions of the possessors' proprietary rights or possessors' intellectual production, like presume to copy possessors' works or utilize possessors' patent. Sometimes it also can be encumbrance actions over possessors' normal exertion of their legal rights or intellectual production, such as forbidden the legal and entitled writer to sign his name on works, and so on.
2). IP civil law duties
Infringement actions shall cause following civil duties: stop infringement, eliminate infections, apology and loss compensation. Stopping infringement is an important right relief measure, no matter whether the infringement doers have faults subjectively, and no matter whether the infringement results in damages, as long as there are evidences to certify the infringement is going on or will come, the possessors are always entitled to apply Court to umpire the doers to stop infringement.
3). IP right conflicts
IP right conflicts are conflicts between IP and other civil legal rights or between IP and IP when they are belong to different right owners. Like when register a trademark using others' name, imagery or art works, etc, when the trademark right will be in conflict with others name right, imagery right or copyright. Court will deal with the right conflicts according to following principles:
a. Parties' agreement in priority principle;
Parties' private agreement is in first, and will be respected by court, when such agreements are valid and legal.
b. Protect the earlier right principle;
When no agreements or agreements are invalid, law shall protect the earlier right in time of come into being, and restrain or terminate the later right.
c. Overdue rights lost principle;
Possessor of earlier right shall request court to restrain or terminate the later right in time limitation; otherwise he/she will lose the winning right.
d. Comprehensive consideration and balance principle.
When all above principles are all hard to be applicable over the situation, court will consider comprehensively the principle of honest and equity, judgment's society affect and so on, and make a balance treatment over right conflict disputes.
4). Time limitation of IP lawsuit
IP lawsuit time limitation is two years, from the time of IP possessors' knowing or should know the infringement. When possessors of patent right, trademark right or copyright raise the litigation beyond the two years, and when the right is still in protection period, court shall award stopping infringement, and the compensation sum shall be calculated by two years just before the date of litigation.
5). Courts in charge of IP civil lawsuit cases
IP civil lawsuit cases mostly are in charged by some intermediate courts according to PRC Supreme Court's regulations. While in Ningbo, Ningbo Intermediate Court is entitled to trial IP civil cases.
3. IP's protection by Custom
According to related PRC Custom IP protection regulations, cargos which infringe legal rights of copy, trademark and patent and so on protected by PRC laws and governmental regulations are forbidden to be imported or exported via Chinese custom, and Custom is entitled to take protection measures when find the related cargos.
Custom protection system over IP shall include following:
1). Put on records
When IP possessors need Custom's protection over their IP related to imported or exported cargos, the possessors must put their IP on Custom's records, and upon related regulations, deliver their application enclose with related certificates. Valid time of on-records is 7 year from time of granted by General Administration of Custom (as “GAC” hereafter).
When IP possessors who had put their IP on records of GAC find cargos with suspicion of infringing their IP are under clearance of custom, they can apply for CUSTOM protection measures with their related evidences, and request local CUSTOM to detain the cargos under infringement suspicion, and so on. At the time, even possessors' IP are not on record of GAC, still they can deliver such applications to local CUSTOM together with their application of putting their IP on records.
3). Investigation and disposal
When local CUSTOM decide to investigate the cargos under infringement suspicion upon possessors' application, or find cargos under clearance of custom have suspicion of IP infringement, the CUSTOM can detain the cargos for further investigations. When the detained cargos are cognized as infringementious cargos by local CUSTOM, related municipal IP administration bureaus or Court, the local CUSTOM shall seize it.
4. Administrative Disposal of IP civil disputes
For IP civil disputes, parties can choose both negotiations by themselves and arbitration when they have an arbitration agreement or arbitration clauses in a contract. When the disputes can not be solved by negotiation and arbitration, either party can make applications to municipal IP Administration bureaus for an Administrative Disposal over the disputes, according to related PRC IP laws and regulations. And the parties can choose lawsuit as well.
Administrative Disposal of IP civil disputes is a special feature of Chinese IP law system, it includes following two aspects:
a. Related municipal IP administration bureaus' Administrative Punishment or Administrative Enforcements over IP infringement, including charging to stop infringement, seizure of infringementious copies, fine, etc. The related municipal IP administration bureaus shall include Municipal Copyright Administration Bureau (in Ningbo it's Ningbo Municipal Bureau of Culture, Broadcasting, TV, News and Publishing) for copyright infringements and disputes, Municipal Patent Administration Bureau (in Ningbo it's Ningbo Municipal IP Bureau) for patent infringements and disputes, and Municipal Industry and Commerce Administration Bureau (in Ningbo it's Ningbo Municipal Industry and Commerce Administration Bureau and district level bureaus) for trademark infringements and disputes.
b. Upon related parties' requirement, municipal IP administration bureaus' administrative intermediation over IP infringement's duties and compensation sum.