China IP 101
The Chinese market presents great opportunities for New Zealand businesses, but also some risks. Careful planning and consideration can go a long way in helping you mitigate these risks. Before packing your bags for China, get the lowdown with trade mark
How can I protect my brand in China?
Corinne: The best way to protect your brand in China is to register it. Like many Asian countries, China’s trade mark law currently follows the rule of ‘first to register, not first to use’. The longer you wait to file your trade mark in China, the greater the risk of someone else claiming rights in your trade mark before you can. However, this is about to change. From May 1 next year, the right of prior use will be introduced into China.
Should I register a Chinese version of my brand?
Corinne: Yes – you should register English and Chinese versions of your trade mark. Even if you intend to market your product using the English version of your trade mark, it pays to register a Chinese version, too, if only to prevent someone else from doing so.
When marketing my product in China, should I use the English or Chinese version of my trade mark?
Corinne: When deciding which version of your trade mark to use, you should consider whether Chinese consumers will be able to pronounce and recall your English brand easily. If they are likely to struggle with this, using the Chinese version may be preferable.
If local consumers struggle to pronounce your brand, they may adopt their own translation of it – and you’re unlikely to have control over what that translation is.
How should I choose the Chinese version of my brand?
Corinne: The first step is to have a clear understanding of what you want your brand to say and how you want local consumers to interpret it. Once you have this message in mind, look at the literal word-for-word translation of your English trade mark into Chinese. Does the translation align with this message? If not, a literal word-for-word translation may not fit with your brand.
The next step is to consider other meanings attached to the words contained in your trade mark. You should consider nuances, associations, and phonetic appeal, as well as associations with local literature, historic figures, and legends.
In addition to differences in word meanings, colours often invoke different emotions. When choosing a colour, do your homework and make sure there are no negative connotations.
Can’t I just slap a dragon on the packaging, change the colour to gold, and add a few Chinese characters?
Corinne: No! You should carefully consider your options, and if possible, seek advice from a trade mark and branding expert.
Why should I protect my IP in China?
Anton: Having appropriate forms of IP protection in China is important if you are doing or are intending to do business in China. If you don’t protect your IP, you will not have any legal rights to wave around in the event that someone copies your product or brand.
The decision to protect in China is no different to making the same decision in other countries. IP laws in China are as good as anywhere else. If you don’t protect your IP in China, an opportunist may do so. This may result in you having to ‘win’ back your IP rights (if possible), even before you start making or selling your product in China.
How should I protect my IP in China?
Anton: The answer to this depends on your business and the IP you’re trying to protect.
Generally, the most effective way to protect your IP in China is to develop a robust IP protection strategy comprising various protection methods.
You should consider combining unregistered rights – such as trade secrets and non- disclosure agreements – with registered IP rights such as patents and trade marks.
How reliable is China’s intellectual property system?
Anton: In recent years, we have
seen China develop its IP laws. These developments are ongoing, and should increase foreign companies’ confidence in doing business there.
Since 2011, the Chinese government has taken several steps to aid the enforcement of IP rights. These steps include: • creating campaigns to combat IP
violations and counterfeiting • giving local IP offices guidelines to enhance enforcement inspections at large exhibitions • adopting a more effective evaluation of law-enforcement performances • establishing a network of IP
enforcement information • setting up education booths in many major centres to teach the general public about IP.
What should I know about enforcing my IP in China?
Anton: The difficulty in China – being such a large country – is finding those who are infringing your IP.
But once they a have been found, enforcement can be quick and relatively inexpensive. Sometimes, knockoffs are being made right under your nose.
I’ve been working with a number of New Zealand companies that have been burnt by their own contract manufacturer who was running night shifts.
The contract manufacturer was making genuine products and selling them out the back door. Having registered IP rights and making regular visits to your contract manufacturer will help keep the situation above board.
For some businesses, it may be realistic to relocate to China, to be at the coal face rather than trying to coordinate things remotely. One of my clients has taken this step and their business has grown exponentially.