Although China has enhanced its protection of intellectual property (IP) rights, the author often encounters overseas brand owners or their lawyers who concern about the actual IP protection situation. Such concerns are not without reasons - China is still a developing country; although its IP legal system has been close to the international level, and law enforcement has also been strengthened, there is still certain gap with that of Europe, the US and other developed countries, especially in terms of law enforcement and punishment.
However, the author notices in some cases that some brands have not been well protected due to lack of sufficient knowledge of China’s law system and judicial environment, and thus failure to develop and implement IP protection strategy that comply with China legal environment.
Current situation of brand protection. Now the overall IP protection mechanisms of foreign brands in China are relatively single and dispersive, which are mainly embodied in two aspects:
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 trademark.
Some companies pay more attention to the infringing products in the market and on the internet, put more efforts on administrative protection, and crack down the fakes in the market through administrative measures, online complaints, warning letters and other means. Some companies prefer to initiate litigation against infringement, and crack down infringers and deter potential infringers through civil procedures or even criminal procedures. However, few companies combine the aforesaid protection measures together through overall strategy to ensure a comprehensive protection to 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 is responsible for trademark protection and the one who is responsible for patent protection may exist, and there is not much interaction in the case. It's rare that different departments coordinate with and support each other systematically concerning certain category of IP right protection.
It's probably relatively simple for the management of the company to take aforesaid relatively single and dispersive protection, and generally it's more effective to take single measure. 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 of the single protection mode is easily to be broken one by one by the infringer, and ultimately effective brand protection cannot be achieved.
Comprehensive protection strategy. Comprehensive IP protection strategy means effective integration of the trademark prosecution, administrative protection, litigation and other protection measures via an 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 the 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, 3-year non-use cancellation or invalid third-party trademark, and the above two measures shall support and cooperate with each other to achieve the best result of stopping infringement.
In addition, patents (especially the design), trademarks, copyrights and other rights shall be all regarded as effective means of brand protection strategy. For instance, in some trademark infringement cases, the infringer has preemptively registered clients’ pattern featuring significant characteristic 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 trademark perspective, and waiting for the lengthy invalidation administrative procedures may adversely affect clients’ business opportunities and market share. In such circumstances, we need consider to take comprehensive protection measures and combine with clients’ copyright or design patent.
The author finds that it can have “1+1>2” effect to combine trademark rights, copyrights, patents and other rights, and take 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 will increase, and the combined effect thus generated may not be achieved by the single and decentralized protection. However, the right owner should also be cautious to develop effective comprehensive strategy; if the right owner lack of ability to overall coordinate and control the aforesaid rights and methods, the effect of this combination strategy may even not be as good as using of single right and take single protection method.