1. Protect Your IP in China by Registering your IP in China.
Register your trademarks, copyrights, and patents in China. Registering your IP in the United States or the EU or Australia or Hong Kong or any other country does not provide you with IP protection in Mainland China.
— China Trademarks: Trademarks are nearly always fast, easy and inexpensive to register in China. If you ever plan to sell your products or services or even just have your products made in China, trademark registration in China is a must. China has a first-to-file trademark system, not a first-to-use system. This means what it sounds like; whoever files and secures a trademark registration first for a brand name or a logo gets it, whether or not you have been using that same brand name or logo in your home country for the last 100 years. Chinese squatters are constantly on the look out for up and coming startups whose trademarks they can register in China and use for “ransom.” Chinese squatters also love securing the trademarks for brand names of products made in China for export. Oftentimes these squatters are friends and/or family of your own manufacturer who register “your” trademark in China and then use that registration to raise your manufacturing costs and then hold you hostage when you try to switch to another manufacturer. See Why Changing China Suppliers Can Be So Risky, where we described this typical scenario:
Western company tells its China manufacturer it will be ceasing to use China manufacturer for its production. A few weeks later, Western company has its products seized at the China border for violating someone’s trademark. The Western company is (rightly) convinced that its China manufacturer is the one behind the product seizure, believing the Chinese manufacturer registered the Western company’s brand names as trademarks in China long ago and is just now using that trademark to seize product as revenge. China has laws forbidding its manufacturers from registering the trademarks of those for whom it manufactures, but because it is usually not possible to prove that your manufacturer in Shenzhen had a cousin in Hengyang do the registering, this sort of thing goes on unchecked. This sort of thing is increasingly happening with design patents as well. For how to prevent this from happening to you, check out the following:
Register Your China Trademark Or Go Home
Register Your China Trademark Or Go Home, Part II.
— China Copyrights. Copyrights are automatically protected in China under the Berne Convention, but to be able to sue quickly for a copyright violation and to have full copyright protection in China, it almost always makes sense to file your copyrights there. Just as in the United States and the EU, you need only submit a small portion of your software code to secure copyright protection on the entire program.
— China Patents: China patents typically must be filed in China before any public disclosure, though there are situations where the application can work so long as it is filed in China within 12 (sometimes more) months of your first foreign patent filing. China also has design patents which are shockingly fast and easy to secure. See The ABCs of China Design Patents.
In most instances it will also make sense for you to secure the appropriate trademarks, copyrights and patents in whatever country you will be selling your product.
2. Protect Your IP in China With China-Centric Contracts.
Having a good contract with anyone in China to whom you will be revealing your IP is the second key to avoiding IP disputes in China and to prevailing in such disputes. The right contract or contracts will depend on your specific situation. The most common contract for IP protection is an NNN Agreement (this is a more thorough, more complicated and, most importantly, more China-centric version of an NDA). But this might also include a trade secret agreement, a non-compete agreement, a confidentiality agreement, a non-use agreement, a licensing agreement, or many other sorts of contracts tailored for your specific situation. For making sure whatever contract you use to protect your IP actually works for China, check out Drafting China Contracts That Work.
In addition to registering your IP in China and having China-centric contracts to protect your IP in China, performing takedowns of products on Chinese websites that infringe your IP and registering your IP with China customs will also usually make sense because these two things are usually both effective and relatively inexpensive.
3. Perform Takedowns on Chinese Websites (and Enforce Your Rights More Generally).
Once you have registered your IP in China, you will be well prepared to perform takedowns of infringing products you find on Chinese websites. This is especially true of products that violate your China trademark or images of products that violate your China copyrights. The major Chinese online marketplaces all have their own takedown procedures which typically require you prove your identity and your company’s bona fides and also that you prove you possess the rights to the IP that is being infringed. Our China IP lawyers/paralegals usually can accomplish a takedown of infringing IP from a Chinese online marketplace within a week or two.
We previously wrote a four part series on copyright takedowns in China that proceeded as follows:
Copyright Takedowns in China was a general summary of the regulations that establish China’s copyright takedown procedures. Copyright Takedowns in China Part 2— Audiovisual and Sound Recordings in the Cloud discussed how China’s takedown regulations apply to cloud service providers. Copyright Takedowns in China, Part 3: Register your Copyrights in China NOW, made clear that “if you ever expect to have infringing content taken down the single most important thing you should do is register your copyright in China in advance.” Copyright Takedowns in China, Part 4: The End of Online Anonymity? was on the things you should do after you succeed in taking down copyright material. See also Getting Counterfeits off Alibaba: Anger is NOT a Strategy.
In addition to takedowns, you should enforce your IP rights more broadly. Develop intelligence on your counterfeiters’ operations and look for opportunities to take action against the factories making the fakes, the warehouses stashing them, those wholesaling and retailing them, and even the malls that rent out space to counterfeiters. Even online sellers can present suitable targets for civil litigatin. In addition to taking counterfeits off the market, you may be able to obtain damages, which at a minimum could help fund brand protection efforts.
4. Register your IP with China Customs.
China Customs will block products that infringe on China IP from entering OR leaving China. The “leaving China” part is why it is 100% essential that you register your IP in China even if all you are doing in China is having your products made there. The leaving China part is also why it usually makes sense for foreign companies that have registered their IP in China to also register that IP with China customs. Even though manufacturing in China is on the decline, China still manufactures way more than any other country in the world and it is still by far the world center for counterfeiting. If you register your IP in China and then also register that IP with China Customs you will have positioned yourself to be able to block counterfeit versions of your products from leaving China for anywhere in the world.