Intellectual Property

Extract from "Practical Guide to IPR Protection in China - How to Protect Your Brand?"

1. What are the brand-related intellectual property rights in China?
Consumers normally identify the products of a manufacturer or the services of a supplier by means of its brand. Brands are recognised by consumers in various ways and brand protection covers different aspects of such recognition.

The primary form of recognition is by way of trademarks. In fact, a trademark is usually synonymous with a brand. For example, the trademark of International Business Machine is "IBM". To consumers, this trademark represents world-renowned IT products with particular qualities.

A brand can also be protected by copyright. For example, Disney's cartoon characters Mickey Mouse and Donald Duck are protected under copyright in China. These cartoon characters are very well-known and popular in the mainland and people who come across Mickey Mouse or Donald Duck would associate them with their creator the Disney company. For Disney, such association is an invaluable asset.

A design patent refers to the appearance of a particular product. When consumers identify a product with the origin of its design, that design may be considered a brand.

Trade name rights are also related to a brand. Every enterprise is identified by its trade name. Since a trade name directly indicates the identity of an enterprise, many enterprises use their trade names as brands to attract consumers to choose their goods or services.

A domain name (e.g. xxx.com) is actually a symbol used to indicate an address on the Internet. Every domain name is unique globally. With the development of the Internet, it is increasingly necessary for brand owners to use the Internet to reach out to their customers and potential customers. Therefore, domain names and brand protection are closely linked.

Apart from the above, civil rights such as rights of personal names and portrait rights are sometimes connected to brands. For example, the use of one's name or portrait as a brand is regarded as an exercise of a person's right in his name or portrait.

Since a brand is associated with the above-mentioned different rights, there are many ways to protect a brand in the mainland. Ways to effectively acquire and protect such rights are hence an important element of brand protection.

In China, there are many famous and long-established brands and trade names in some traditional industries, for example, "Tong Ren Tang" (同仁堂) for Chinese herbal medicines and "Quan Ju De" (全聚德) for Peking ducks. They all have a history of more than a hundred years. As the ties between China and the rest of the world grow closer and closer, certain traditional Chinese products are increasingly recognised and accepted by people around the world. When these long-established trade names seek to expand overseas, brand name becomes the most important issue in their foray into the different markets. For example, when Tong Ren Tang entered the Japanese market, it encountered problems because its name had been registered by a local Japanese enterprise. As more and more Chinese enterprises go international by expanding into overseas markets, they are also becoming more aware of such brand-related problems and obstacles.

The experience in brand protection accumulated by mainland enterprises can serve as a reference for Hong Kong companies.


2. What is a trademark?

Generally speaking, a trademark is a sign which enables people to identify the goods or services of an enterprise distinguishing them from those of other enterprises.

According to this definition, under the current Trademark Law, a trademark is a visible sign capable of distinguishing the goods or services of a manufacturer or supplier from those of others.

Visible signs include:

 

Words (e.g. "PHILIPS", "HAIER")
Graphics (e.g. )
Alphabets  (e.g. "IBM", "TCL")
Numerals (e.g. "8848", "777")
3D signs (i.e. three-dimensional signs, e.g. the contour bottle of Coca-Cola) and colour combinations, as well as combinations of these elements.

However, sound, smell and taste have not yet been recognised by the current Trademark Law as trademark elements.

As trademarks, these visible signs have to be used on the goods produced by the manufacturer or in the services provided by the supplier in order to indicate the origin of the respective goods or services.

Trademarks may be used on the product itself or on the container or packaging of the product. They may also be used in documentation in relation to the transaction of the product or in advertising materials, exhibitions and other commercial activities. As for services, trademarks may be used in respect of the tools or utilities that provide the services or at the venues where such services are provided.

In accordance with the different characteristics of trademarks, the current Trademark Law classifies trademarks into goods trademark, service mark, collective mark and certification mark. Trademarks used on goods are goods trademarks. For example, the "Rejoice" trademark for "shampoo". Trademarks used in respect of services are service marks. For example, the "McDonald's" trademark for "fast food restaurant".

Collective marks refer to signs registered by groups, associations or other organisations and used by members of the organisation concerned in commercial activities, to indicate the qualification of the user of the sign concerned as a member of that organisation. For example, the trademark  registered in goods such as "watches and clocks".

Certification marks are signs which indicate that the goods or services in connection with which they are used have been certified by the owner of the sign in respect of place of origin, raw materials, method of production, quality or other specific characteristics. For example, the "Q mark" registered for services such as "tour arrangement".
 

3. What is the "first-to-file" principle?

The meaning of the "first-to-file" principle is that if different applicants apply for the registration of an identical or similar trademark, the Trademark Office will confer trademark right on whoever first filed the application. Therefore, the sooner the application is filed, the more likely the applicant will get protection of his trademark. Application should be filed prior to the actual use of the trademark. At the same time, where the trademark is to be used in many different countries or regions, application should be filed in all those countries or regions as soon as possible.


4. What are the grounds for objecting to trademark registration?

In summary, the grounds for objecting to trademark registration can be classified into absolute grounds and relative grounds. Absolute grounds refer to the inherent non-prohibitiveness and distinctiveness of a trademark, whereas relative grounds mean that a trademark should not be in conflict with the legal rights obtained earlier by other persons. Details are set out below.


5. What is the meaning of distinctiveness of a trademark?

The distinctiveness of a trademark means that the trademark must be so distinctive as to be distinguishable. This attribute is in fact the basic function of a trademark, which serves to distinguish the origin of the goods or services concerned.

Generally speaking, according to the level of distinctiveness of the signs in use in respect of goods and services, they may be divided into five categories: innovative signs, arbitrary signs, suggestive signs, descriptive signs and generic signs.

(1) Innovative signs are signs of creative words and graphics. For example, "Exxon" and "Kodak". These creative signs have inherent distinctiveness and can be used for any goods or services.

(2) Arbitrary signs are signs of common words and graphics which have no relationship with the goods or services on which the signs are used. For example, "Apple" for jeans and "Tiger" for beer.

(3) Suggestive signs are signs of words and graphics which describe the goods or services in an indirect manner. For example, "Greyhound" for transportation services and "Last Supper" for pesticide.

Owing to their inherent distinctiveness, the above three kinds of signs can be used and registered as trademarks.

(4) Descriptive signs are signs of words and graphics which have direct indications of the quality, primary raw materials, functions, use, weight, quantity and other characteristics of the goods or services in respect of which the trademark is used.

Examples:

Signs having direct indication of the quality of the goods or services:
"Supreme", "Choice", etc.
Signs having direct indication of the primary raw materials of the goods or services:
"pure cotton" for garment,
"nicotine" for cigarettes, etc.
Signs having direct indication of the colours in which the goods usually present themselves:
"Red" for wine, etc.
Signs having direct indication of the function or usage of the goods or services:
"Quick Relief" for medicine,
"Cool White" for chewing gum, etc.
The difference between descriptive signs and suggestive signs is that the former describes the characteristics of the goods and services directly, whereas the latter makes an indirect description. To determine whether a sign constitutes a direct description, the sign must first be considered in conjunction with the goods or services in respect of which the sign is used. Second, consideration must be given to whether the sign is to be used among traders, whether it has been used in actual transaction, and whether the exclusive use of the sign by a particular trader would hinder the reasonable use of the same by other traders or undermine fair competition among traders.

(5) Generic signs are signs of names, graphics and models which are commonly used in respect of the goods or services. For example: "Yellow Pages" for telephone directories and "XXL" for garment, etc.

A sign composed solely of a descriptive or generic sign would not be allowed for registration for lack of distinctiveness. However, if the descriptive or generic sign is only a component part of a sign, then it is necessary to consider the distinctiveness of the sign as a whole. For example, in the use of the trademark "Huanggua Cola" (皇瓜可樂) for beverages, the word "Cola" in the trademark is the generic name of the goods. However, since "Huanggua" is distinctive, the trademark as a whole is allowed for registration. The proprietor of the trademark may use his trademark as a whole and may also prohibit other people from using "Huanggua" as a trademark for beverages. However, he cannot prohibit others from using the generic name "Cola".

The above five categories are classified on the basis of the meaning of the signs. However, the meaning of a sign may change according to circumstances in which they are used. Therefore, the same sign may switch from one category to another category.


6. What are similar trademarks?

Identical trademarks refer to trademarks under comparison which basically have no visual difference. Similar trademarks refer to trademarks which have similar appearance, pronunciation or meaning in their wordings, or similar configuration and colouring in their devices, or similar overall structure of the combined essential elements, or similar 3D shape or colour combination, such that the concerned public may be misled into wrongly identifying the origin of the goods or believing that the goods under the two trademarks are somewhat connected.

The purpose of determining the identity or similarity of trademarks is to ensure that trademarks can serve to properly distinguish goods and services of different origins and to prevent possible confusion in the market. Hence, the determination should be based on the general perception of the concerned public. In determining whether trademarks are identical or similar, overall comparison, essential elements comparison and isolated comparison should be made. The distinctiveness and reputation of the trademarks should also be taken into consideration.

Word marks should be compared with regard to their pronunciation, appearance and meaning; whereas device trademarks should be determined whether they are identical or similar in respect of their appearance and visual effect. For example:

Chinese trademarks "Wa Ha Ha" (娃哈哈) and "Wa Sha Sha" (娃啥啥); "Guang Tai" (廣泰) and "Guang Qin" (廣秦); "Wei Wang" (味王 ) and "Da Wei Wang" (大味王 ); "Jia He Lian Hua" (嘉和聯華 ) and "Jia He" (嘉和) and "Lian Hua" (聯華), etc. are considered similar trademarks.
English trademarks "Power" and "Powerful", "TDK" and "TTK", etc. are considered similar trademarks.
The Chinese trademark "皇冠" and the English trademark "Crown" are considered similar trademarks.
Numeral trademarks such as "767" and "797" are considered similar trademarks.
Device trademarks such as "   " and the word mark "Olympic" are considered similar trademarks.
When examining applications for trademark registration, the Trademark Office would apply different rules in its determination of similar trademarks according to different circumstances. However, the general principles adopted by the Trademark Office in determining identical or similar trademarks can be used as reference in the designing of trademarks.


7. Application procedure for trademark registration

Generally, in applying for trademark registration, the following documents have to be submitted to the Trademark Office:

(1) An Application Form for Trademark Registration. Where a trademark agency is appointed, a Power of Attorney has to be submitted also.

(2) Five copies of the specimen trademark.

(3) In filling out the names of goods or items of services, for each application, the name of each piece of goods or each item of service should be written under the prescribed class in accordance with the international classification.

(4) Where the right of priority is claimed, a written declaration should be made in the Application Form. The right of priority refers to the system established in accordance with the Paris Convention for the Protection of Industrial Property (PCPIP) aimed at giving a six-month protection period to the first application for trademark registration. Under this system, within the protection period, in respect of any subsequent applications for registration of the same trademark for the same goods filed with different countries and regions, the application date of the first application will apply. For example, for an applicant who files his first application for trademark registration in Hong Kong on 1 January 2005, if at any time before 1 July 2005, say on 30 June 2005, he files an application for registration of the same trademark with China's Trademark Office claiming the right of priority, then the date of application for registration in China will be the date of application for registration in Hong Kong, i.e. 1 January 2005. Even if another applicant files an application for registration of the same trademark in China on 2 January 2005, the former application will have priority over the latter.

(5) A copy of the applicant's identification document.

(6) An administration fee of Rmb1,000 for each application for trademark registration is required. For applications covering more than 10 items of goods/services, an additional charge of Rmb100 per extra item of goods /services is required.


8. What are the points to note after registration of a trademark?

Where the use of a registered trademark violates the relevant provisions of the Trademark Law regarding its use, the Trademark Office can cancel the registered trademark. The purpose of such cancellation provisions in the Trademark Law is, on the one hand, to impose use obligations upon the registered trademark owner and, on the other, to restrict the manner of use of his registered trademark, so as to ensure that the registered trademark is capable of identifying and distinguishing the source of the owner's goods or services from those of others, thus protecting the interests of other trademark owners and the public. Hence, in order to maintain a registered trademark and avoid the loss of trademark right through cancellation, a clear understanding of the rules for use of trademarks is essential.

According to the Trademark Law, a registered trademark is subject to cancellation under the following conditions:

(1) Where the registered trademark is altered unilaterally;

(2) Where the name, address or other registration detail concerning the registrant of the registered trademark is altered unilaterally;

(3) Where the registered trademark is assigned unilaterally;

(4) Where the registered trademark is used on goods that are poorly manufactured and inferior in quality so as to deceive consumers;

(5) Where the registered trademark has not been used for three consecutive years.

Under the first four conditions which relate to irregular use, the Trademark Office can effect cancellation of the registered trademark of its own accord. Under the fifth condition which relates to the absence of actual use of the registered trademark, the Trademark Office may only effect cancellation upon application by an interested party.

Under the first three conditions, the trademark registrant may continue to use the trademark after completing the necessary formalities in a timely manner and obtaining the relevant approval. For example, submitting a new application for trademark registration, or applying for change of name and address of the registrant, or applying for assignment of the registered trademark.

Under the fifth condition, any person may apply to the Trademark Office for cancellation of the registered trademark. However, applicants should note that the trademark in question must have been registered for three years or more. Application for cancellation may be made in respect of part of the goods or services registered or all of the goods or services registered which have not been in use for three consecutive years. However, in the latter situation, proof of use of any one item of the goods or services by the trademark registrant is sufficient to maintain registration for all of the goods or services concerned.

In view of the three-year non-use cancellation provisions, as far as the trademark registrant is concerned, he should actively use his registered trademark in order to avoid its cancellation due to non-use, for example, to effect use of the trademark on the goods, packaging or containers and on trade documents, or use it in advertisements, exhibitions or other commercial activities. Use refers to actual use in the course of making a profit. A statement of use is not sufficient. A trademark registrant should retain evidence of use, which may come in handy in the event of a cancellation being filed against his registered trademark. From the perspective of public interest, an enterprise with a genuine need to use a trademark but cannot do so because someone else has registered the trademark but has not used it may take advantage of this three-year non-use clause to apply for cancellation of the idle mark. At the same time, this enterprise may apply for registration of the trademark so as to acquire a trademark of value. In other words, through these cancellation provisions in the Trademark Law, the distribution of trademark resources may be optimised while idle trademarks may be put into commercial use again, creating more wealth for society.


9. What is the validity period of a registered trademark?

The validity period of a registered trademark will be ten years, counting from the date of approval of registration. Where the registrant intends to continue to use the registered trademark after the expiration of the validity period, an application for renewal of the registration should be filed with the Trademark Office within six months before the said expiration. The period of each renewal will be ten years. The registrant may renew the trademark registration for an unlimited number of times. After examination and approval of the renewal application, the Trademark Office will issue the relevant certificate and make a publication. The validity period of a renewed trademark will be calculated from the day after the expiration of the previous validity period.


10. What is a well-known trademark?

A well-known trademark refers to a mark which is widely known to the general public and enjoys relatively high repute in China. It does not have to be registered in China.

The rules for protection of well-known trademarks have been set out in the Paris Convention for the Protection of Industrial Property and the TRIPS Agreement. As a member of the Paris Convention and WTO, China has incorporated provisions regarding the protection of well-known trademarks into its new Trademark Law and the relevant implementing rules in line with the requirements of the Paris Convention and TRIPS.


11. What special protection do well-known trademarks enjoy?

The owner of a trademark which has been accorded well-known trademark status can enjoy the following rights:

(1) The right to stop the use of and to prevent the registration of any identical or similar trademark in respect of any identical or similar goods or services, even though the well-known trademark has not been registered in China, if such use or registration is likely to cause confusion.

(2) Where the well-known trademark is registered in China, the right to stop the use of and to prevent the registration of any identical or similar trademark in respect of non-identical or dissimilar goods or services, if the trademark in question would mislead the public and would likely prejudice the interests of the owner of the well-known trademark.

Compared with ordinary trademarks, the above scope of protection of well-known trademarks is much wider. First, for an ordinary trademark, the foremost condition for legal protection is to obtain registration. For an unregistered trademark, prior use may not be used as the grounds for challenging a registration application by another person for an identical or similar trademark in respect of identical or similar goods or services. For an unregistered trademark which has already been in use but has not attained the status of a well-known trademark, the owner of the trademark has to prove that pre-emptive registration has been made by another person by unfair means before he may seek protection under the Trademark Law.

However, if the trademark has been recognised as well-known in China, even though it is not registered, the owner may still prevent the registration and use of an identical or similar trademark on identical or similar goods.

Second, where a trademark has been registered, as mentioned above, the Trademark Law gives protection only to the extent of identical or similar goods or services in respect of an identical or similar trademark. However, for a well-known trademark, the Trademark Law not only prohibits the registration and use of an identical or similar trademark on identical or similar goods or services, but also on non-identical or dissimilar goods or services, if such use misleads the public and is likely to cause prejudice to the interests of the well-known trademark owner.


12. What is copyright?

In China, copyright (版權) and the right of authorship (著作權) are synonymous. It refers to the right possessed by the creator of literature, artistic works or scientific works, or the lawful owner of any works of their own intellectual creation. This right includes the right to prohibit others from reproducing, publishing or broadcasting their works without authorisation.


13. What kind of works enjoys copyright?

Under the Copyright Law, a wide range of works are entitled to copyright protection. Written works, musical, dramatic, choreographic and acrobatic works, works of fine art, photographic works, cinematographic works, drawings of engineering designs, product designs, computer software, etc. are all protected by copyright. In terms of brand protection, trademarks, advertising slogans, manuals, product photographs and product packaging are under copyright protection. Enterprises should take note whether their works can enjoy copyright.

First, some trademarks are not only protected by the Trademark Law, but are also protected by the Copyright Law. Such trademarks mainly refer to those which consist of graphics, graphical characters, or special characters. Since graphics and creative forms of characters are protected by copyright, these trademarks are also protected by copyright.

For advertising slogans of enterprises, as long as they have originality, they can be protected by the Copyright Law. For instance, Remy Martin's slogan "Once Remy Martin starts to flow, wonderful things naturally follow" (人頭馬一開,好事自然來) is a typical example of advertising slogans that are protected by copyright. However, not all advertising slogans can enjoy copyright protection. Slogans which are too simple or lack creativity may not enjoy copyright protection because they do not possess originality.

Product manuals and product catalogues designed or produced by the enterprises themselves are also protected by the Copyright Law as long as they are not copied works. Where enterprises commission others to design and produce the product manuals, they should agree with the commissioned designer or design company on ownership of the copyright arising therefrom. The commissioning company can enjoy the copyright if both parties agree that the copyright should belong to the commissioning company, otherwise the copyright would belong to the designer or design company.
 
If the product photographs are produced by the employees of an enterprise in the course of employment, the enterprise should state whether the copyright of the photographs belongs to the enterprise in accordance with the terms of the employment contract or a separate contract. If the enterprise commissions others to produce the photographs, the enterprise should also agree with the commissioned designer or design company as to who should own the copyright. In the absence of such agreement, the copyright of the product photographs would belong to the producer of the photographs.


14. How do residents and enterprises outside China obtain copyright in China?

The Chinese mainland, Hong Kong and many other countries and regions in the world are members of the Berne Convention for the Protection of Literary and Artistic Works. According to the Berne Convention, works created by nationals of the member countries (including Hong Kong citizens and enterprises) can enjoy the same protection in other member countries as their nationals in these member countries. Hence, works of Hong Kong citizens or enterprises can enjoy copyright protection in China.

Moreover, the works of any foreigners or stateless person, provided that they were first published in China or other member countries of the Berne Convention, can also enjoy protection under the Copyright Law in China.


15. What is the purpose of registering copyright?

In China, a voluntary registration system applies to copyright. This means a copyright owner may choose to register or not to register his works.

Since copyright subsists automatically and not through registration, and an infringement act may occur many years after the completion of the works, the owner may have difficulties in claiming copyright at the time of copyright infringement, e.g. loss of the original copy, or difficulty in proving the copyright creation process and copyright ownership due to changes in personnel.

The benefit of registering copyright with the relevant authorities of China is that the owner can prove by means of legal procedure that he owns the copyright, so that he can lodge a complaint with the Copyright Bureau anytime he discovers any act of infringement, and request the Copyright Bureau to take action or request for detention of the infringing goods when they pass through Customs.

If an owner has not registered the copyright of his works beforehand, he has to provide evidence (e.g. the original copy) to prove that he owns the copyright when he makes a complaint. If the owner is not well-prepared in advance, he may not be able to collect sufficient evidence in time. Failure on the part of the owner to provide sufficient evidence of his copyright ownership may make it difficult for the Copyright Bureau or Customs to take any action, and the owner will lose the opportunity to stop the infringement act.

Therefore, even though an owner can enjoy copyright without registration, it is advisable that in the case of more important works, the owner should register his copyright so as to make things easier when he exercises his rights in the future.

The owner should note that the certificate of copyright registration only serves as prima facie evidence of his rights. If any contrary evidence is submitted in any subsequent infringement disputes which proves that the owner does not in fact enjoy the copyright, the administration authorities or the court handling the case may conduct a re-examination on whether the owner really enjoys the copyright as claimed.

Currently, the organ responsible for registration of copyright of foreign works is the China Copyright Protection Center. Enterprises which are registered in China can register their copyright with the local copyright registration department.


16. What is the term of copyright protection?

For the work of an individual author, the term of protection is the lifetime of the author and fifty years after his death. In the case of a work of joint authorship, the term of protection will expire fifty years after the death of the last surviving author.

As for employment work, the term of protection will expire in the fiftieth year after the first publication of such work.

The term of protection for cinematographic works and photographic works expires in the fiftieth year after the first publication of such work.

The expiry date for the above-mentioned fiftieth year is 31st December of the fiftieth year.

Publication of the work can be in any form of making the work public. It can be written publication or publication on the Internet, or performance in public, or dissemination of information to the public.


17. How do enterprises protect copyright in their day-to-day operation?

Since owners often encounter difficulties in proving copyright ownership, enterprises should collect evidence of copyright ownership in their day-to-day operation.

First, the enterprise should stipulate clearly in the employment contract the duties of the employee and that the copyright of any employment work belongs to the employer.

In the design stage of a new product, the enterprise should mark the production date and the name of the author or designer on the product design drawings, collect the same and keep them in safe custody.

For works which are about to be published, the enterprise should mark the date of publication on the works. In practice, since a product manual bearing the date of publication can become out-dated due to the passage of time, many enterprises are not keen to specify the date on their product manual. The disadvantage of this is that when they discover that their product manual is plagiarized by others, it will be difficult for them to prove that they are the first to compile and use the product manual. One feasible solution is to print the copyright mark on the product manual. For example, 2005©XXXCompany.

For works already published, the enterprise should keep the original and mark the publication date and place. If the work is printed by a printing company, the enterprise should keep the printing contract and the printing screen. Such documents and items can be used to prove ownership of copyright.


18. What types of design can be granted patent?

Design patent protects the shape, pattern and colour, or combination thereof, of a product. In practice, the subjects of design patent include products with special shape (e.g. telephone sets), product packaging (e.g. wine bottles), and product or packaging labels. As such, the range of works for which design patent may be obtained by enterprises is very broad.

A prerequisite for obtaining design patent is the design must possess novelty. In other words, the patented design must not be identical or similar to the design of any product which has been publicly disclosed in publications in China or abroad or publicly used in China before the date of application, and cannot be in conflict with the prior legal right of any other person. Hence, enterprises should apply for design patent before launching a product on the market and should not publicly disclose their product design before filing the application.

It should be noted that a design will not lose its novelty if the design is exhibited at an international exhibition organised or recognised by the Chinese government before an application for design patent is filed, or if the design is disclosed by any party without the consent of the applicant. Hence, before a product enters the market, if it is necessary for the enterprise to disclose information of its new product to clients, it should ask them to sign a confidentiality agreement, so that if any disputes arise in the future, this can help to prove that the enterprise has not allowed others to publicly disclose the content of its product design.


19. How does the Patent Office examine a design patent?

In China, the Patent Office does not perform examination as to substance for design patents. This means the Patent Office only performs examination as to  formality, checking whether a design patent application is in conformity with the relevant provisions. For example, whether the format of the application letter, description, drawings and classification of the design comply with the relevant provisions. However, the Patent Office does not perform any search in respect of whether there are any identical or similar prior applications. Any design patent application which complies with the requirements as to  formality will be granted patent.

Patent searches are searches for any prior applications for identical or similar patents. Usually they are performed by a patent applicant before filing his application, and the patent applicant will then decide whether to apply for patent based on the search result. Alternatively, patent searches are performed by enterprises faced with an infringement action, so as to decide whether to make an application for invalidating the patent of the opposite party. In design patent litigations, the court may also require the patent owner to furnish a patent search report in order to assess the validity of the patent. As mentioned above, the Patent Office does not perform patent search in the course of its examination of design patent applications and will grant patents directly.

For designs which lack novelty but are granted design patent, any person may apply for invalidation of such designs by presenting supporting documents. Applications for invalidation should be made to the Patent Reexamination Board.


20. What is the term of protection for design patents?

The term of design patent protection is ten years, counting from the date of filing. An enterprise granted design patent should pay an annual fee to maintain the validity of the patent right.


21. What constitutes trademark infringement?

Trademark infringement refers to the use of a trademark which is identical or similar to the registered trademark of another person on identical or similar goods, the sale of infringing goods, and the manufacture of forged trademark labels. In determining whether an infringement act exists, two factors must be taken into consideration, namely whether the goods involved in the infringement are identical or similar and whether the two trademarks at issue are identical or similar.

Identical or similar goods are goods that are the same as or belong to the same class of goods for which a trademark has been registered. Even for goods which do not belong to the same class, they may still be regarded as similar according to their function, use or sales channel.

In the determination of trademark infringement, it must also be taken into consideration whether the two marks at issue are identical or similar. Two trademarks are identical if there is no visual difference between them when the allegedly infringing trademark is compared with the registered trademark. Two trademarks are similar if the fonts, pronunciations, meanings or graphic components and colours of the registered trademark and the infringing trademark, or the combination of the above elements, are similar; or if the three-dimensional shapes and colour combinations of the two trademarks are similar, thereby misleading the concerned public into believing that the infringing goods belong to the trademark owner or are in some way associated or connected with the trademark owner, or misleading the concerned public into believing that the manufacture of the goods has been approved by the trademark owner or that the manufacturer and the trademark owner are associated companies.

For example, in the case where the owner of the "Heng Sheng" (恆生 in Chinese) trademark sued the owner of the "Heng Sheng" (恆昇 in Chinese) trademark for infringement, both trademarks were registered and used on computers and computer-related products under Class 9. In determining whether the two trademarks were similar, the court of first instance took into consideration the fact that whether an ordinary consumer would be confused by the two trademarks on the market. While the pronunciation of the two trademarks in putonghua is the same, the second character of the two trademarks is different. However, this difference did not have substantive effect on the consumer in differentiating the trademarks. Hence, ordinary consumers in the market were likely to be mistaken as to the source of the computer products bearing the two trademarks and misled into thinking that products bearing the two trademarks were produced and sold by the same manufacturer, or thinking that the two trademarks were in some way connected. As a result, the two trademarks were held to be similar trademarks.
 
Nevertheless, it is only when both determining factors are in the affirmative that an act of trademark infringement is established.


22. What constitutes copyright infringement?

Some Hong Kong companies may find that pictures of their products have been used by other enterprises in their product catalogues or manuals; or that other enterprises have published product catalogues that are very similar to theirs in terms of words and design; or that their product manuals have been copied. Such acts constitute copyright infringement in China. The use of product pictures or manuals totally identical to the product pictures or manuals of another party is an act of illegal copying, while the adoption of another party's manual to a certain extent is an act of plagiarism, both of which constitute acts of copyright infringement.

With regard to plagiarism, there are no clear guidelines under China's intellectual property laws as to the degree of adoption which constitutes plagiarism. Generally, plagiarism exists where the infringer uses the original part of the work of others and the part used accounts for a certain proportion of the work as a whole. However, what "a certain proportion" is depends on individual cases. If the alleged infringer is only using descriptions commonly used to describe the same goods in his manual and the use only involves certain individual phrases, it may not constitute infringement.


23. What constitutes design patent infringement?

An act involving the use of a product design identical or similar to the registered design patent of another party constitutes design patent infringement.

Currently, there are no unified standards for the adjudication of design patent infringement in China. However, the Opinions on Certain Issues in the Adjudication of Patent Infringement Cases (Trial Implementation) issued by the Higher People's Court of Beijing, which have a significant impact on guiding courts in Beijing in trying patent infringement cases, serve as a reference for other local courts. According to the Opinions, the adjudication of design patent infringement involves determination on whether the goods used by the accused party and the goods granted the design patent are identical (adjudication may also be made on similar goods in special circumstances), and whether the design of the accused party's product is identical or similar to that of the design patent.

To determine whether the allegedly infringing goods and the goods granted the design patent are identical or similar, the aesthetic standard of an ordinary consumer should be adopted, and not the aesthetic standard of a professional in the relevant field.

In comparing the design of the allegedly infringing goods and the patented goods, an overall observation of the goods and a comprehensive judgment should be made to ascertain whether the two possess the same level of appeal. The focus of the comparison should be on the major part of the patentee's original design (essential part) which possesses aesthetic value and the corresponding part of the allegedly infringing goods, in order to determine whether the defendant has copied or imitated the plaintiff's original work.


24. What are the available courses of action for resolving intellectual property disputes?

With regard to trademark infringement, unfair competition, copyright infringement and patent infringement, the intellectual property rights holder normally has two courses of action to choose from. One is to lodge a complaint with the administration authorities, which will in turn carry out investigations and take appropriate measures; the other is to institute civil proceedings at the court, which will make a decision in respect of the infringement case.

In addition to administrative complaints and civil proceedings, for more serious infringement cases, intellectual property rights holders may also report the case to the Public Security Bureau or make a direct application to the court for criminal prosecution to be initiated against the infringer. If the court is of the view that a case for criminal prosecution is established, the individual infringer or the responsible person(s) of the corporate infringer will face a prison sentence of up to three years or penalty in the form of a fine. For more serious infringement cases, the individual infringer or the responsible person(s) of the corporate infringer will face a prison sentence of three to seven years in addition to payment of a fine.


25. What are the pros and cons of administrative actions and civil proceedings?

After receiving an infringement complaint, the administration authorities normally conduct investigations into the infringing enterprise within a short time and will seal, impound or seize the infringing goods found. As such, administrative actions have the benefit of stopping the infringement act quickly.

Moreover, the procedures for lodging an administrative complaint are relatively simple and involve less costs. However, the administration authorities are not empowered to demand the infringer to make payment for damages. Hence, it is normally difficult for the intellectual property rights holder to claim damages through administrative complaints, unless the infringer is willing to pay damages upon mediation by the administration authorities.

Compared to administrative complaints, the procedures for civil proceedings are more complicated and involve more time and costs. However, an intellectual property rights holder can both stop the infringement act and claim damages in civil proceedings.

In practice, many intellectual property rights holders cannot obtain satisfactory monetary compensation in civil proceedings due to failure to produce concrete evidence proving the infringer's illegal gains or their own losses. As a result, some intellectual property rights holders prefer making administrative complaints with a view to speedily stopping the infringement act at lower costs, even if the value of the infringing goods is relatively high.


26. Where to lodge an administrative complaint on infringement acts?

Trademark infringement and unfair competition cases are usually within the jurisdiction of the local Administration for Industry and Commerce  at the place where the infringement takes place. The place of infringement includes the place where the infringing goods are manufactured, transported, sold or stored. Hence, if the infringing party is a factory and there are infringing goods on the factory premises, the intellectual property rights holder can make a complaint to the local Administration for Industry and Commerce  at the place where the factory is located. If the intellectual property rights holder finds the infringing goods on the market, he can also make a complaint to the local industry and commerce administration at the place where the retailers are located.

Using other people's factory name and address without authorisation or making false representation as to the quality of the products violates the regulations in both the Anti-Unfair Competition Law and the Product Quality Law. The affected party can make a complaint to the Administration for industry and Commerce  based on the Anti-Unfair Competition Law or to the Technical Supervision Bureau based on the Product Quality Law.

Copyright infringement cases are handled by the Copyright Bureau at the place where the infringement takes place. It should be noted that according to the Copyright Law, the Copyright Bureau can impose administrative penalty in cases where the infringing act also harms public interests. So theoretically speaking, not all copyright infringement complaints are accepted by the Copyright Bureau. It is only when public interests are at stake that the bureau will initiate investigation. In practice, there are different interpretations as to what amounts to public interests. Some local copyright bureaus accept ordinary copyright infringement cases while others are more cautious in accepting complaints. One should seek advice from a lawyer or intellectual property agent on whether a local Copyright Bureau is likely to accept one's case.

Patent infringement cases are handled by the local Intellectual Property Office (previously the Patent Administrative Bureau), which mainly handles cases by way of mediating between the two parties involved in a dispute. The infringer may agree to cease infringement and pay certain compensation upon mediation by the Intellectual Property Office. However, in some cases the infringer may not accept the Intellectual Property Office's mediation and may apply for invalidation of the patent. This will make it difficult for the Intellectual Property Office to adjudicate whether the accused party has committed infringement and may delay the case for a long period of time.


27. What preparations should be made before lodging an administrative complaint?

Before an intellectual property rights holder makes a complaint to the administration authorities, he should be well-prepared in three aspects.

First, he should consider whether further investigation should be conducted. In general, the intellectual property rights holder should have in hand certain evidence proving the infringement act before making an administrative complaint, e.g. the product catalogue of the infringing company. Whether further investigation is necessary depends on the strength and reliability of the evidence already obtained.

If the intellectual property rights holder only has the product or catalogue of the alleged infringer with no knowledge whether the infringer is actually manufacturing the infringing goods or whether there is any stock of infringing goods in the factory, further investigation is necessary. No administrative complaint can be made until it is ascertained that the alleged infringer is producing the infringing goods or has the infringing goods in store, which can ensure that when action is taken by the administration authorities the infringing goods will be seized. In the case of retailers selling infringing goods, administrative complaints should be made when the retailer is selling the infringing goods or has the infringing goods in store, which can ensure that an administrative raid can be carried out successfully.

Secondly, the intellectual property rights holder should prepare all the documentation which is to be submitted to the administration authorities, i.e. the complaint letter, the relevant certificates supporting ownership of the rights, and evidence of the infringement act.

Furthermore, the intellectual property rights holder should communicate with the administration authorities before the complaint is made to confirm the time for lodging the complaint and conducting investigations, and to ascertain whether there are any specific requirements on the documentation to be submitted so that all prerequisites can be met in advance.

The intellectual property rights holder should appoint an intellectual property agent or law firm to make the preparations mentioned above and handle the complaint. Currently, there are many intellectual property agencies in China which, in addition to handling trademark and patent applications, have specialist staff with experience in handling administrative complaints concerning infringement cases. Since satisfactory results are unlikely to be achieved without the relevant experience, it is suggested that Hong Kong companies should consult intellectual property agencies or law firms specialised in infringement cases.


28. What is the civil litigation system like in China?

While enterprises can handle intellectual property infringement cases through administrative complaint, litigation is the ultimate means to resolve all kinds of civil infringement cases. Whether it is a trademark infringement case, copyright infringement case, design patent infringement case, anti-unfair competition case or domain name dispute, the parties concerned can resolve the dispute through litigation.

Hong Kong companies instituting civil litigation in the Chinese mainland must note that they must choose a court with the competent jurisdiction to lodge their case. Civil cases involving infringement may be under the jurisdiction of the court in the place where the defendant is, the place where the infringement act occurs, the place where the infringing goods are stored, or the place where the infringing goods are impounded. Cases involving Hong Kong companies are treated as foreign cases and are usually governed by the people's court at or above intermediary level.

China adopts a two-tier final appeal system. In other words, every case will be tried at a court of first instance, and if any party is dissatisfied with the decision, it may appeal to a court one level higher. The adjudication of the court of appeal is final and the party cannot appeal further. There is a time frame for adjudicating civil cases. For domestic civil cases, the time frame for first instance is six months, and three months for appeal. Foreign cases are not subject to any time limit, but the court will usually seek to conclude the cases according to the time frame prescribed for domestic cases.
 

29. What preparations should be made before instituting civil litigation in infringement cases?

The rights owner needs to collect evidence of infringement before initiating litigation. Compared with administration authorities, the court's requirements for evidence of infringement are more stringent, in that product catalogues of the other party obtained through unofficial means are not sufficient as evidence. Some courts do not accept evidence of infringement obtained without notarial attestation. Therefore, the rights owner should obtain samples and invoices of the infringing goods sold by the other party in the presence of a notary officer. Before making such purchase, a request for notarised purchase has to be made to the Notarial Office by the rights owner or its authorised agent. A notary officer will then accompany the rights owner or agent to purchase the infringing goods, and will issue a notarial certificate after making the purchase. This certificate can be presented as concrete evidence of the infringement. If an infringing party's website contains pictures or descriptions of the infringing goods, the rights owner can also request the notary officer to notarise the infringing party's website. The role of notary officers in China differs from that of the notary public in Hong Kong. Notary officers in China are government officers serving the Notary Office in different places. A notary officer will usually testify or review the legal facts required to be notarised at the request of a rights owner, and will issue a certificate accordingly. Such notarial certificates are generally acceptable in China. In an infringement litigation, for facts already notarised in a notarial certificate, the party concerned is not required to produce other supporting evidence.

Moreover, a rights owner also needs to provide trademark registration certificate, copyright registration certificate, patent certificate, etc. as documentary proof of his rights. For trademark infringement cases, proof of rights refers to a valid trademark registration certificate and proof of its renewal or assignment. As the reputation of the trademark is also one factor to be considered by the court in determining whether infringement acts exist, the rights owner should also provide evidence of reputation of his trademark. For example, the advertising coverage of the brand, advertising expenditure, sales figures, media reports, etc. For anti-unfair competition cases, the rights owner has to provide as evidence his product name, packaging and  get-up, or proof of ownership of the relevant commercial secrets or contracts with confidentiality undertaking. For copyright infringement cases, the rights owner has to produce his copyright registration certificate or other evidence of ownership of the copyright, e.g. the negative film of the product photograph, original draft of the product manual, etc. For patent infringement cases, the rights owner should provide his patent certificate and a copy of the patent registration record. The patent registration record is a document certifying the validity of the patent. The Patent Office will issue a copy of the patent registration record at the request of the rights owner at any time.

As civil proceedings are relatively complicated, enterprises should seek the advice of a lawyer or agent specialised in this field. Where the preparation of documents and evidence is concerned, the requirements of the courts in China are quite high and different courts at different places have different requirements. Lawyers or agents can offer professional advice on how to conduct investigations, notarised purchase, notarisation of documents and other certification procedures. Lawyers or agents can also advise enterprises on how to collect the necessary evidence in order  to choose a favourable court venue. Therefore, engaging the right lawyer or agent is an important aspect in litigation preparation.
 

30. What constitutes intellectual property rights infringement offences?

According to the Criminal Law, intellectual property rights infringement offences include:

(1) Trademark infringement, which includes using a counterfeit registered trademark on same goods, selling goods bearing a counterfeit trademark, and producing counterfeit trademark label. It should be noted that not all trademark infringements constitute an offence. As a counterfeit trademark refers to one which is identical to a registered trademark, using a trademark similar to a registered trademark only constitutes an act of infringement and does not constitute a criminal offence.

(2) Patent counterfeiting, which again is different from an act of patent infringement. The offence of counterfeiting a patent refers to the use of a patent number belonging to another party on one's product packaging, promotion materials and contracts, thereby misleading others into believing that the patented technology is used, as well as forging patent certificates and patent documents.

(3) Copyright infringement, which means copying, distributing, publishing or producing a copyrighted work without the authorisation of the copyright owner.

(4) Violation of commercial secrets.


31. How to hold an infringer of intellectual property criminally liable?

During the investigation of cases involving infringement of intellectual property rights or violation of commercial secrets by the Administration for Industry and Commerce or Copyright Bureau, if it is found that the illegal business turnover or illegal proceeds of the infringer reach the standard for a criminal case, the case will be transferred to the public security authorities for further investigation. If the public security authorities find that the case constitutes a crime, the case will be transferred to the procuratorate for prosecution.

In cases where the circumstances of the infringement case involved are not very serious, i.e. cases with criminal sanction not exceeding three years and no investigation by the public security authorities are required due to the clear circumstances of the crime, the rights owner can file an application for prosecution with the court himself with a view to imposing criminal liability on the infringer.


32. What is the Domain Name Dispute Resolution System?

The Domain Name Dispute Resolution System is a system for settling domain name disputes through a third party. Under this system, the rights owner may have his domain name ownership dispute arbitrated by a third party. The third party must be an arbitration body authorised by the Internet Corporation for Assigned Names and Numbers (ICANN) or a second level domain name administration organisation (e.g. the China Internet Network Information Center (CNNIC) which is the administration organisation for CN domain names). The third party can make a decision either to refuse a complaint or to award the domain name in dispute to the complainant. The domain name registration agent concerned will enforce the ruling of the third party.


33. To which organisations should domain name disputes be filed?

Domain name disputes regarding first level domain names such as ".com", ".net", ".org" can be filed to the Asian Domain Name Dispute Resolution Centre or the Hong Kong International Arbitration Centre. The main offices of these two domain name dispute settlement bodies are located in Hong Kong, while the Asian Domain Name Dispute Resolution Centre also has an office in Beijing.

Disputes in respect of second level domain names with the ".cn" suffix and Chinese domain names can be filed to the Hong Kong International Arbitration Centre or the Domain Name Dispute Resolution Center under the China International Economic and Trade Arbitration Commission (CIETAC). (These two organisations will hereafter be referred to as the domain name dispute settlement body).

Domain name disputes in China mainly involve second level domain names with the ".cn" suffix and Chinese domain names. The procedures for settling disputes in respect of ".cn" domain names are given below.


34. Who may seek intellectual property protection from the Customs?

Trademark registrants, patent owners and copyright owners may register their intellectual property rights with the Customs. Upon discovering that infringing goods are about to be imported or exported, trademark registrants, patent owners and copyright owners can request the Customs to detain such goods.


35. How to apply to the Customs for filing intellectual property rights for the record?

A rights owner may at anytime during the validity period of his intellectual property rights apply to the Customs for  recordal of his rights with the Customs.

The Chinese Customs has already implemented an online filing system. Rights owners can visit the Customs' website (www.customs.gov.cn) and complete the application form online. After the completed application form has been submitted online, it should be printed out, stamped and sent to the Intellectual Property Office under the Policy and Legal Affairs Department of the General Administration of Customs together with the relevant identification document (business registration), proof of intellectual property rights (trademark registration certificate, patent certificate, certificate of voluntary copyright registration etc.) and licensing documents of the rights owner.

Whether or not the intellectual property rights of a product have been recorded is not a prerequisite for the Customs to detain suspected goods. Thus, right owners may apply for the same on a voluntary basis. However, intellectual property rights  recorded with the Customs can be put under closer watch of the Customs which may be able to spot suspected infringing goods in their surveillance of imported and exported goods. In fact, most of the infringement cases handled by the Customs at present were initially discovered by the Customs, which would then notify the rights owner. Moreover,  recording one's intellectual property rights with the Customs would make it easier for the Customs to contact the rights owner once suspected infringing goods are found, facilitating the rights owner to take the appropriate action at once.


36. Warning letters

Warning letters are issued to warn the infringing party, and demand the infringing party to cease the infringement act. Very often, the rights owner would request the infringing party to sign an undertaking to refrain from all future infringement acts.

It is difficult to predict the effect of a warning letter on the manufacturer of infringing goods. Many manufacturers simply ignore the letter or deny any infringement. However, a formal warning letter may still serve some purpose. For instance, if the infringing party continues with the infringement, since he has already been put on notice, the act becomes a deliberate act of bad faith.

The effect of warning letters on retailers is more obvious. Most well-managed malls will respond to such letters, or even provide information on the sources supplying the infringing goods. Where the infringement is obvious, these malls would likely agree to cease the sale of such goods. As for smaller retailers, even if they may not respond to the warning letter, they would take more caution. Some may even agree to refrain from all future sale of the infringing goods in order to avoid greater loss.

Warning letters are primarily applicable under the following circumstances:

(1) The infringement act is not serious, especially where the quantity of infringing goods is not substantial or where no infringing goods are involved;


(2) The infringing party has ceased the infringement act;


(3) There is certain difficulty in determining whether the act involves infringement or not. For example, the other party has used one's trademark on different or dissimilar goods, and one's trademark is not recognised as a well-known trademark;


(4) There are numerous infringing parties and it is not possible to file administrative complaints or legal proceedings against each and every party;


(5) Once administrative complaints or litigation have been brought against the manufacturer, a warning letter can be issued to the retailers.

Rights owners should make sure that they have evidence of infringement in hand before issuing a warning letter in order to avoid being sued by the other party.


37. Negotiation

In cases where it is controversial as to whether infringement exists, negotiation can be considered as a means of resolution. Under the following circumstances, a rights owner may consider negotiating with the other party to resolve the dispute:

(1) The other party is using a trademark identical to one's registered trademark on different or dissimilar goods and one does not have sufficient evidence to get one's trademark recognised as well-known;

(2) Where there is conflict of rights between the two parties. For example, where one party has trademark rights and the other has copyright, and it is disputable as to who has the prior right.

When there are controversies as to whether infringement exists, the lawyers representing both parties can first liaise and negotiate. In certain administrative complaint cases where the administration authorities find it hard to determine whether infringement is involved, negotiation may also take place. Both parties can resolve the dispute and reach an agreement under the mediation of the administration authorities.


38. Why is collecting and safekeeping brand data important?

When brand name disputes arise, it is crucial to prove one's rights. For some enterprises which have been operating in the market for many years and their brand names have gained a certain degree of recognition, usually they would have obtained trademark registration for their goods or services. However, the most common problem they counter is the registration or use of a trademark identical or similar to theirs on different goods or services. Under such circumstances, if an enterprise wishes to oppose the registration or prevent the use of such trademark, it would have to prove that its trademark is a well-known trademark.

If the rights owner has designed and produced his product photographs or catalogues and subsequently discovers that his product photographs have been used or similar product catalogues have been produced by others without his permission, he would have to prove that he is the one who first produced or designed the photographs or catalogues before he could make an infringement claim. On the other hand, if such a claim is made against him, he would have to prove that the photographs or catalogues are his own design and production and not copies of other people's works.

There are also cases where the rights owner uses unique product shape or product packaging but has not applied for trademark registration of his product shape or packaging in time while others may have applied for trademark registration or design patent of the same. Under such circumstances, the original rights owner has to prove that he is the one who first designed or used the product shape or packaging before he could apply for revocation of the trademark or annulment of the patent registered by others.

In unfair competition cases, if the name or packaging get-up of one's well-known goods has been used by others without one's consent, the rights owner would have to prove that he is the one who first used the same name or  trade-dress. Besides, the rights owner would also have to submit evidence proving that his products have a certain degree of reputation, such as advertising expenditure and sales revenue.

Therefore, the collection and safekeeping of one's brand data is of utmost importance. Not only can such data serve as evidence proving the infringement act of others, it can also help one defend oneself against any infringement allegations.


39. How to collect and safekeep brand data?

The collection and safekeeping of brand data is an on-going process. As an enterprise may have lots of brand data on hand, a comprehensive system is required for selecting and collecting such data. In view of the fact that the purpose of collecting brand data is to prove one's prior rights and brand reputation, enterprises should focus on the collection of the following in their daily operation:

Information in respect of one's prior use of a certain brand name, product catalogue or packaging, e.g. contracts signed relating to the design of the trademark, product catalogue or packaging; correspondences between the parties concerned on confirming the designs; contracts signed relating to the printing of the product catalogue or packaging. Such documents should preferably bear a date;
Information on the advertising of the trademark, including sample advertisements, advertising contracts, invoices or accounts bills of advertising expenses, release time and scope of the advertisement;
Sales information of the enterprise, including sales period, geographical area of sales, and annual sales volume and value;
All kinds of registration certificates of the enterprise, including business registration certificate, copyright registration certificate, patent certificate, certificate of quality approval etc.;
Information relating to the appraisals by outsiders, including news reports, the ranking of the enterprise in the relevant industry, awards and certificates of honours granted to the enterprise;
Records of the brand name receiving special protection, e.g. information showing that the brand has been recognised as a well-known trademark receiving special protection in certain countries or regions.

40. How to prevent infringement of one's brand?

If infringement acts are not detected and stopped in time, any subsequent action taken by the rights owner will become more difficult and costly. Not stopping an infringement act in time will not only make the infringement problem more serious, but will also make the infringing party more resistant to the infringement claim as he may have already invested quite substantially in the production of the counterfeit goods over time. Furthermore, the protection given to certain intellectual property rights has a limited period. If the infringement act is not stopped by the rights owner in time, it may become lawful over time. For example, after a trademark has been registered for five years, no one may apply for revocation of the trademark registration on the grounds that it is similar to one's trademark with prior rights. According to a document issued by the Higher People's Court of Beijing, where an enterprise name is in conflict with a trademark, if the trademark owner fails to take action within five years after the registration of the enterprise name, no protection will be given to the trademark.

Therefore, enterprises should be vigilant in taking protective measures in a timely manner so as to curb any infringement or counterfeiting act in its nascent stage.

Enterprises may consider using the following means to monitor market trends and keep abreast of information concerning infringement:

Instructing intellectual property agencies to monitor public announcements concerning trademarks. Once identical or similar trademarks are discovered, the rights owner should file an opposition or revocation application with the relevant administration authorities;
Establishing an in-house dynamic monitoring system for infringement information. The sales department is normally entrusted with the responsibility of monitoring market conditions. Once any suspected infringement is found, report should be made to the department in charge of legal affairs in the company. The enterprise may also authorise the sales department to take direct action against any infringement acts;
Engaging professional investigation companies to monitor the market. In fact, there are investigation companies which are willing to provide free market monitoring service to enterprises. Once signs of infringement are found, the investigation company will report to the enterprise or its intellectual property agent. If the enterprise instructs the investigation company to file a complaint with the relevant administration authorities, then the investigation company would take action on behalf of the enterprise. Generally, such investigation companies would only charge the enterprise after investigations are successfully carried out by the relevant authorities. Enterprises should consult experienced lawyers or intellectual property agents on how to select the appropriate investigation companies for different cities.

 

 

 


 

 

 

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