Enforcement of trade marks / Copyrights in China

Intellectual Property Rights (IPR) - Enforcement in China -- How can one enforce trade marks / Copyrights in China?

It is believed that the manufacturers in China have dominant potential to produce cost effective and quality product as compared to any other competitive manufacturer of the world. All economies are devising anti-dumping strategies and to combat counterfeiting and infringement.

How would any manufacturer (or Indian manufacturer) enforce his rights in China against a Chinese manufacturer / exporter selling counterfeit goods to third world countries or any other countries of the world?

IP in China:

·         China does not recognize rights of proprietor of the trade marks if the mark is not registered in China. There would be no enforcement of trademarks through Courts or through Administrative Authorities i.e. Customs.

·    Registration of trademarks is on the basis of (FIRST COME FIRST) the i.e. on Priority of the application filed.

·    It is mandatory for every manufacturer to file trademark application before commencing production of the goods or he has bear penalty for such failure. The registrar may also force the manufacturer to register the mark. So even if a person wants to manufacture counterfeit product he has to register the mark in China. What if the counterfeiter applies for the marks (international brands) which may not be identical but may be similar in nature to that of the original ones? The proprietor of the original mark (international Brand) may be objected by the Registrar due to prior registered / pending mark on record on the ground of distinctiveness. It will also be difficult for the honest user of the mark to prove his usage and well-known use of the mark in China for registration as he may not be selling his goods in China. If the mark (International brand) is pending for registration there will be no enforcement of his rights against any Chinese manufacturer. The mark has to be applied in Chinese language. 

·     There is no common law remedy of passing off of trademarks / Copyrights in China. If at all any action is to be initiated well-known usage of the mark in China has to be proved by evidence. It would be difficult for any proprietor of the mark to launch its goods in china with Chinese language.

·     Enforcement of Copyrights also requires registration of the Copyrights in China.

The statute of PRC - trademarks and its implementation rules are framed in such a manner that no action can be initiated without registering the trade mark in China.  Also no criminal actions can be initiated till the time trademark applications are pending for registrations. The customs also does not entertain any complaints of unregistered trademarks.

If our Indian trademark law is compared with that of China the difference is clearly visible. In India Passing Off action as well as criminal enforcement protects rights of the proprietor of trademarks till the time trademarks application is pending for registration.

Though China is party to BERNE and TRIPS convention it has statutorily provided for registration of the Copyrights prior to its enforcements. Recently the administrative authorities claims to have initiated actions, however recognisation of rights without registration is farstreached from imagination.

In short ......in my view a shell is created to boost its economy....

Is there any other remedy by which one can enforce its rights against counterfeiters....? Please let me know.....

© 2007 Santosh Mane, Mumbai ,
published on 18th June 2007

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