On your marks, Get set, Go
Protecting Your Trademarks Before, During and After the CIIE
Authored by Da Wo
The Chinese economy has progressively shifted from a period of hyper-speed growth based on low-cost mass manufacturing to one of moderate controlled growth based on high added-value economic development. Moreover, Chinese consumer market keeps expanding and demand for high-quality goods and services is steadily growing. In May 2017, President Xi Jinping announced at the Belt and Road Forum that China would hold a China International Import Expo (CIIE) starting from 2018. From November 5ththrough the 10thof this year the new National Convention and Exhibition Centre in Shanghai will host the first China International Import Expo. https://www.ciie.org/zbh/en
With 2800 companies from over 130 countries and regions, it is already branded as one of the most important trade gatherings in the world, representing another step forward in China’s drive for economic globalization. It is also a significant indicator of China’s intent to continue to open its markets further, creating opportunities for businesses from around the world. Because Chinese law is also fast evolving, we at Da Wo Law Firm have put together a series of short primers, introducing some essential features of Chinese law relevant to participants at the CIIE.
In our previous article we talked about the misconception among many foreign businesspeople that IP cannot be protected in China (it can!). In this installment, we start digging into one of the practical considerations that you should take into account regarding IP protection in China and in particular when participating to a trade fair as the CIIE: the status of your trademark protection in China.
Here is a scenario you may have already considered prior to the CIIE: what do you do if you notice something fishy at the expo regarding your trademark? Well, before we get to that point, one “best practices” idea is to notarize and legalize (for use in China) your company registration certificate in your home country before attending. Notarized and legalized company registration certificates will be required to initiate any IP complaints while you are in Shanghai.
On top of this, even though the approval process takes a matter of months, it is beneficial to file an application to register your trademark in China before displaying your brand at the CIIE. This is because China uses a “first to file” trademark registration system, meaning that you may lose legal protection of your brand in China if someone has applied or registered a trademark similar or identical to yours with the China Trademark Office.
Back to the scenario above; if you have handled these two “best practices” tasks, it smooths the process for filing complaints with the IP Service Center which is available to assist you at the CIIE (and at most major trade fairs in China these days). If the IP Service Center confirms prima facie the trademark infringement, it will ask the offender to take down the infringing representations of your trademark immediately. If they refuse to do so, the IP Service Center will submit the case to the proper authority for later judgment (in trademark cases, this is the local Administration of Industry and Commerce).
In any case, if you notice an infringement against your trademark at the fair, you would be well advised to undertake the necessary steps in order to preserve any evidence of the infringement. This can be done with a China Public Notary. Evidence preserved in this manner will be highly persuasive to the court/administrative organ if any administrative action or judicial litigation is initiated in the future.
Da Wo Law Firm Shanghai will be ready and able to help you at the CIIE with issues like this, and just about anything else that arises. We are a full service, China-registered firm with recognized expertise in IP, as well as many other areas of Chinese and international law on which CIIE attendees will need advice. We have provided bespoke legal services to companies small and large for over 15 years, throughout the Asia Pacific region and Europe. With 20 lawyers and paralegals (4 different nationalities), we are able to work in French, English, Dutch, German, Mandarin, Cantonese and Shanghainese.
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