Combined protection of your IP rights

Although China has enhanced its protection of intellectual property (IP) rights, the author often encounters overseas brand owners, or their lawyers, who worry about the IP protection situation. Such concerns are not without reason – China is still a developing country; although its IP legal system is close to the international level, and law enforcement has been strengthened, there are still certain gaps with that of Europe, the US and other developed countries, especially in terms of law enforcement and punishment.

However, the author has noticed in some cases that some brands have not been well protected due to a lack of sufficient knowledge of China’s legal system and judicial environment, and thus failure to develop and implement an IP protection strategy that complies with China’s legal environment.

Brand protection. The overall IP protection mechanisms of foreign brands in China are relatively single and dispersive, and are mainly embodied in the following two descriptions.

In terms of protection methods, many companies separate the protection
methods of trademark prosecution, administrative protection (anti-counterfeiting) and litigation etc., thereby failing to form an interactive and integrated system. Some companies focus on brand protection through prosecution, put trademark filing first in the core categories and related categories to prevent the third party’s registration, and also establish their own solid foundation of trademark right through raising opposition, three-year non-use cancellation (cancellation
of registered trademark for non-use for three consecutive years) or invalid third-party trademarks.

Some companies pay more attention to infringing products in the market and on the internet, put more effort into administrative protection, and crack down on fakes in the market through administrative measures, online complaints, warning letters and other means. Some companies prefer to initiate litigation against infringement, crack down on infringers and deter potential infringers through civil procedures or even criminal procedures.

However, few companies combine the above-mentioned protection measures together through an overall strategy to ensure a comprehensive protection for their brands. In terms of the type of IP rights protection, many companies take protection measures for trademarks, patents, copyrights, domain names, business names and other IP rights, respectively. Lack of communication between personnel who are responsible for trademark protection and those who are responsible for patent protection may exist, and there is usually not much interaction in these cases. It’s rare for different departments to co-ordinate with and support each other systematically concerning certain categories of IP right protection.

It’s probably relatively simple for the management of a company to take relatively dispersive protection, and generally it’s more effective to take single measures. However, given the increasingly complicated IP infringement situation, single protection always seems to be inadequate when the infringer gains legal support from experienced or even professional persons, thus each single protection mode is easily broken, one by one, by the infringer, and ultimately effective brand protection cannot be achieved.

Comprehensive strategy. A comprehensive IP protection strategy means effective integration of trademark prosecution, administrative protection, litigation and other protection measures via a unified strategy and mutual support among various categories of IP rights, based on clients’ business objectives in China, IP rights status and protection purposes.

When dealing with experienced and complicated infringement, on the one hand we may take administrative protection and/or litigation to crack down on infringement on the internet or in the market; on the other hand, we may cancel the preemptive registration of the same or similar trademark of the infringer through raising opposition, three-year non-use cancellation or invalid third-party trademark, and the above two measures must support and co-operate with each other to achieve the best result of stopping infringement.

In addition, patents (especially design), trademarks, copyrights and other rights must all be regarded as effective means of a brand protection strategy. For instance, in some trademark infringement cases, the infringer has preemptively registered the clients’ pattern featuring significant characteristics as its trademark. Before the trademark registered by the infringer becomes invalid, it’s difficult to win the case if we only safeguard IP rights from a trademark perspective, and waiting for the lengthy invalidation administrative procedures may adversely affect clients’ business opportunities and market share. In such circumstances, we need to consider taking comprehensive protection measures and combine them with clients’ copyright or design patent.

The author finds that this can have “1+1>2” effect in combining trademark rights, copyrights, patents and other rights, and taking comprehensive measures, including but not limited to trademark prosecution, administrative protection and litigation, to deal with complicated infringement cases.

By taking this combination strategy, the success rate for protection will increase. This combined effect also may not be achieved by single and decentralized protection. However, the right owner should also be cautious when developing an effective comprehensive strategy. If the right owner lacks the ability to co-ordinate and control the above-mentioned rights and methods, the effect of this combination strategy may not be as good as using any single protection method.

Frank Liu is a partner at Jincheng Tongda & Neal