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Doing business with China. An IP perspective
Anton BlijlevensPartner
Outline for today’s presentation
● IP update
● IP enforcement
● Top tips
Outline for today’s presentation
● IP update ● IP update
● IP enforcement
● Top tips
China’s IP system
● From no IP system to being world class - in only 38 years.
● Over 38% of the world’s patents are filed in China.
● Court cases 109,386 intellectual property cases.
More stats
• New Balance Case
Gisborne, 12 May 2016
New Balance - July 2017
Statutory damages for TM’s = NZ$600kCourt awarded NZ$2m
Current IP law highlights
● Major change in Trade Mark law
Recent TM law changes in China – how do they help?
• A new law specifically states that trade marks should be registered and used in accordance with the principles of good faith.
• Prior use now has some limited recognition.
• There are options to take on those who use your trade marks.
• Many CN agents and distributors require that your CN trade mark is registered.
Copyright registration
● Certificate issued● Can’t be squatted on ● Instant evidence of ownership and what its for:
‒ Logo, picture, drawing, product
● Can register for product shape protection! ‒ Unlike registered designs, can register after product launch.
Very helpful tool for:Take down noticesTrade fair enforcementFactory raids
Copyright ©
● IP enforcement
● IP update
● IP enforcement
● Top tips
IP enforcement in China
China’s enforcement laws are good
Central court system
Local administrative office route
Anti-Unfair Competition Law
● Top tips
● IP update
● IP enforcement
● Top tips
Top tips and recommendations
● Don’t expect China to do business the New Zealand way – learn their way and adapt
● Understand the value of your IP – and register it!
‒ patent and utility models, trade marks (English and Chinese, coloured, 3D versions), copyright.
● Don’t forget about copyright and unregistered rights such as trade secrets and unfair competition laws
● Use NDA’s but….
● Be vigilant
● The only difference between counterfeit and genuine product is the time of day it is made by your factory.
● Manage and be engaged in your relationships
OEM in China – a word of caution
● Many advantages for foreign companies, but many IP-related issues
● Every class of IP asset (copyright, trade secrets, trade marks, patents, designs, utility models) may need to be shared with an OEM in the normal course of outsourcing your manufacturing … but be careful!
● OEMs are uniquely positioned to create counterfeit products because:
‒ proprietary IP, once in the hands of an OEM, may be illegitimately used by the OEM to manufacture unauthorised batches of product or as a base to develop more sophisticated products
‒ OEM may illegally share your IP with other customers or competitors for their own commercial benefit
Strategies to deal with OEMs
● Know who you are dealing with – forewarned is forearmed
● Find well-established reputable OEMs – they have more to lose
● Know your IP – assess what you can live with being leaked
● Consider on-shoring production of critical components/processes
● Structure OEM agreements with a high level of detail around different forms of potential IP-related disputes eg, state specific amounts of compensation for certain eventualities (may act as a deterrent but also provides practical clarity)
● Ensure your Chinese contracts are enforceable
● Register your IP in China– enforcement of unregistered rights is difficult
● Litigation (actual or threatening) may be your best or only recourse in some circumstances
Thank you
Anton [email protected]
If you have any questions, my free* 30 minute meeting deal applies
*You may need to buy me a coffee. Buy lunch and we can meet for 1 hour
