Maarten Roos著

中国の偽造の継続的だった普及は法律のただの問題、施行のまた1つでありではない。 中国の法律および規則が知的財産権中国の保護メカニズムのある特定の部分が非効果的証明した(旅行)および他の幅受け入れられた国際的な主義の交換関係した面の一致に合致する間。 共通の例は偽造者の刑事責任、民事手続きの損傷を証明すると背信登録が証明する証拠の高い重荷および難しさのための高水準である。 一方では効果的に侵害を戦うために警察、行政権限および裁判所が頻繁に資源、知識または決定に欠けていることは、豊富に明確である。

中国の自身の継続開発およびそれ程ではないにせよ国際的な圧力は上記の問題の改善を、次第にもたらすが、これはプロセス個々の知的財産(IP)の所有者影響を及ぼすことができるではない。  しかし所有者は中国の法律の下で中国でIPに占有権を有すること、そして感知された侵害に対して処置をとるために最もよい決定がかどうかすぐに作ることができることを保障できる。 Such protection, usually inexpensive and rarely time-consuming, is the most basic element to an organization’s IP strategy.

Identifying the IP Manager

Every organization should appoint someone to coordinate IP interests. Whether it is an IP specialist, lawyer or manager, at least one person needs to maintain a clear perspective on the organization’s IP interests and rights, collect information on potential infringements, and be able to respond immediately in case of need.

Responding quickly and decisively to potential IP infringements is often a crucial part of the success of an IP enforcement action. Therefore the most effective IP Managers are people with authority, who are able to reach decision makers quickly. They build communication channels with sales persons and others in the organization to learn of infringements. And they ensure that a law firm is retained to support enforcement actions at short notice, with a valid Power of Attorney and relevant IP registration certificates in place.

Identifying your IP Portfolio

IP rights gain value during the course of one’s business. A regular review of an organization’s intellectual property to identify which are sufficiently valuable to protect will prevent an organization from being caught off-guard.

Logical moments to conduct such an IP audit are when a foreign company enters a new market or when it establishes a subsidiary. Thus foreign companies investing in China should make an IP review part of their due diligence. Furthermore, as China is a fast-developing market place, a yearly review is recommended. During this review, the IP manager should identify the old and new IP that the organization (and perhaps its affiliates) owns in China, and whether the corresponding rights are registered (in case of trademarks and patents). If not, then the IP manager should be able to proceed with registration at short notice.

Among the IP that should be reviewed are:

(1) Brand names, either developed by the organization or its affiliates abroad, or even those that have developed in the market – e.g. a Chinese version of an existing international mark;
(2) Domain names which correspond to the trade name and/or above brand names (especially those ending with .com, .cn and .com.cn);
(3) Patents, which are technical inventions developed by the organization or its affiliates abroad;
(4) Specific designs of industrial products which are distinctive and may be easily copied
(5) Copyrights, such as software, catalogues, webpages and articles; and
(6) Trade secrets, undisclosed technologies, confidential business information and other sensitive data to which the organization has rights through contractual obligations of employees or commercial counterparts.

All the above can be protected under Chinese law. However trademarks and domain names must be registered before another party does so, and for a patent filing to be granted the technique or design must be either novel (not publicized elsewhere before the filing date), or must be applied for within a certain period after the corresponding foreign application. This makes the timing of such applications crucial.

Registered trademarks, copyrights and designs may also be recorded with the Chinese customs authorities. As a consequence, if customs finds goods that are infringing on recorded rights, it will notify the owner immediately so that the latter can take action. If they know of a shipment of counterfeits, owners of recorded rights may also notify customs directly.

Maarten Roos, Wang Jing & Co

This is the first part of the article Protection vs. Enforcement. Next week we will publish the second part.