Are you IPready for China Riccardo Benussi Shanghai

Are you IP-ready for China? Riccardo Benussi – Shanghai Monday, March 13 – 2017 www. dezshira. com

General Introduction to Dezan Shira & Associates

Numbers 1992 275+ 2, 000+ 80+ 24 www. dezshira. com Dezan Shira’s establishment Our team of legal, tax, accounting and audit professionals Multinational clients that have already chosen us Countries served by our professional services Our offices in China, India, Vietnam, Singapore, liaison offices in Italy, the United States and Germany, and alliance offices in Indonesia, Malaysia, the Philippines, and Thailand.

Services Suite Pre-Investment and Entry Strategy Advisory Corporate and Tax Structuring Cross-border Transactional Support Audit, Financial Review, Due Diligence www. dezshira. com Accounting, Payroll, and Treasury Tax and Compliance Employment law and HR ERP and Financial System Advisory

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Focus on Intellectual Property [zhi-shi-chan-quan] 知识产权 Trademark protection in China

Origins. www. dezshira. com

BRENNEN BRAND www. dezshira. com 2021/5/18 www. dezshira. com 11

The IP family Intellectual Property (Industrial Property) Innovation Invention and Design Patents www. dezshira. com Distinction Trademarks Creation Copyright

So, why even bother with IPRs? A bit of IP awareness favors: Competitiveness Attractiveness towards investors Cash-flow source Return on investment Grants Exclusivity www. dezshira. com 2021/5/18 www. dezshira. com 13

Consequences of poor IP portfolio management Loss of • • business revenue reputation, and competitive advantage www. dezshira. com 2021/5/18 www. dezshira. com 14

Universally accepted definition of a trademark • A sign that can be represented graphically, such as: words, drawings, letters, figures, sounds, form of the product or its packaging, the combinations or shades of color, which is used by a body or a Company to distinguish itself and/or its products, and/or services which it produces, and/or markets. www. dezshira. com 2021/5/18 www. dezshira. com 15

focus • A sign that can be represented graphically, such as: words, drawings, letters, figures, sounds, form of the product or its packaging, the combinations or shades of color, which is used by an individual or a company to distinguish itself and/or its products, and/or services from those of others. which it produces, and/or markets. www. dezshira. com 2021/5/18 www. dezshira. com 16

Trademarks • “BIG MAC” = word mark www. dezshira. com

As defined in the Chinese trademark law • Currently 4 th amendment (1982, 1993, 2001 and May 1 st 2014) • Article 8. An application may be made to register as a trademark any mark, including any word, device, any letter of the alphabet, any number, three-dimensional symbol, colour combination and sound, or any combination thereof, that identifies and distinguishes the goods of a natural person, legal person, or other organization from those of others www. dezshira. com

To know and do in China Choose what to protect Create a Chinese trademark File the trademark Look out for IP violations Enforce IP rights www. dezshira. com 2021/5/18 www. dezshira. com 19

Let’s focus on Trademarks in China – the basics “Domestic” filing Filing Chinese characters IP importance when applied to FDI in general Awareness • • • Internal Trade fairs Online In JVs At Customs www. dezshira. com 2021/5/18 www. dezshira. com 20

Filing a trademark in China • Select an agent/ firm and make as many applications needed for each class of goods or services • Government fee ~125 USD per application for 10 sub classes of goods or services • Duration: 9 to 18 months Search Application Registration If all ok: Preliminary approval and publication • Opposition procedure Formal examination Substantial examination www. dezshira. com 2021/5/18 www. dezshira. com 21

So what are the problems? How things go wrong: Because of your fault: • • Negligence (lazy? Fear of spending? ) Bad management at trade fairs giving samples and brochures? Bad brand protection at home and abroad Presumption of being a well-known TM in China, “too”! Not because of your fault: • Squatting of TMs and domain names (cybersquatting) www. dezshira. com 2021/5/18 www. dezshira. com 22

What could happen to your trademark in China Squatting and ransom Chinese nickname issue www. dezshira. com Counterfeiting and piracy

How FDI in China is affected by IP issues www. dezshira. com 2021/5/18 www. dezshira. com 24

Filing a trademark in China 1. Create a literal translation e. g. Apple chose the Chinese word ‘ping guo’ (苹果), which is Chinese for ‘apple’ (computers). • Disadvantage: the Chinese characters will sound different from your original trademark. • This means that time and money will need to be spent on building the association between your Roman characters trademark and the Chinese character trademark. www. dezshira. com 2021/5/18 www. dezshira. com 25

Filing a trademark in China 2. Create a phonetic translation Examples: • ‘Mc. Donald’s’: ‘Mai Dang Lao’ (麦当劳) • ‘Audi’: ‘Ao Di’ (奥迪) • ‘Siemens’: ‘Xi Men Zi’ (西门子) Choose your characters wisely and under professional guidance 3. Combination: literal and phonetic transliteration Examples: • Coca-Cola settled with ‘Ke Kou Ke Le’ (可口可乐): ‘tasty and joy’. www. dezshira. com 2021/5/18 www. dezshira. com 26

On-line protection www. dezshira. com 2021/5/18 www. dezshira. com 27

Enforcement Administrative route Lawsuit Evidence collection Civil case or criminal prosecution AIC or AQSIQ Evidence collection and seize and desist letter FINE Expensive, uncertain Destruction of goods Slow but awards damages Fast but no damages awarded www. dezshira. com 28

IP considerations when entering new markets 1. Identify IP assets 2. Assess vulnerability 3. Clarity of ownership 4. Think about online protection 5. Know and adapt to local rules 6. File IP rights 7. Do not forget copyright 8. Establish key contracts and licenses 9. Spend for advisory 10. Be prepared to enforce your rights 11. Build internal awareness 12. Join forces and experiences on protecting your IP www. dezshira. com

Open for discussion Q&A ON-LINE protection Geographical indications “Belgian sounding” www. dezshira. com 30

Thank you! Riccardo Benussi riccardo. benussi@dezshira. com www. dezshira. com 2021/5/18 www. dezshira. com/de 31

Appendix Trademark protection in China www. dezshira. com 32

Domestic filing – Competent Authorities • SAIC - State Administration for Industry and Commerce - Beijing • CTMO - China Trademark office – Beijing • A trademark can be applied for either domestically, in accordance with the Chinese Trademark Law or internationally through an application with the World Intellectual Property Organisation (WIPO). www. dezshira. com

Trademarks – how they are classified Denominative trademarks Figurative trademarks Complex trademarks Sound trademark • Denominative trademarks are those made up of imagined words, patronymics, geographical names, social titles, acronyms, letters of the alphabet, numbers, etc. • Figurative trademarks are those made up of emblems and colors and include more elaborate representations, such as cartoons, labels, portraits, etc. • Complex trademarks are those made up of both figurative and denominative elements. • These are for example the signature tunes of radio and television programmers. They are registered by filing the relative pentagram. www. dezshira. com

More trademark types • Three-dimensional trademarks are the shape of the products and their packaging. It should be remembered that a trademark for the shape of a product cannot be granted indiscriminately, but only if the shape is unusual, arbitrary or imaginative. The shape must not have any aesthetic or functional purpose, or any particular use, otherwise the protection is obtained by a patent of Three-dimensional industrial invention and utility model, or by registering models. trademarks Trademark of odour • Trademarks of odour can only be properly protected if they can be reproduced graphically, for example by a chemical, or descriptively or by systems of analysis. www. dezshira. com 35

What is not a trademark Words, figures or signs contrary to law, public order or morals. This rule also concerns obscene drawings or words which are offensive to public decency, or intended to discredit national institutions, religious sentiment, and the symbols of the nation More: Coats-of arms, flags, official emblems and other signs considered in International Conventions in force, the coats-of-arms and heraldic emblems of public interest, unless the competent Authority has authorized the registration. www. dezshira. com

Also not trademarks Names of people, signs used in the artistic, literary, scientific, political or sporting field; denominations and acronyms of performances, names of associations and public authorities, if well-known, can be registered as a trademark only by those who have the right to do so, or otherwise by third parties who have the agreement of the former. Finally, signs likely to deceive the public, particularly on the geographic origin, the nature or quality of the product or the services, cannot be registered as trademarks. “Italian sounding” www. dezshira. com

Protecting your trademarks upon entering Chinese market • China uses a “first-to-file” principle • Highly recommended to file trademarks as early as possible Ø Logos and word trademarks Ø Chinese han-zi 汉字 Ex. Mc. Donald’s’: ‘Mai Dang Lao’ (麦当劳) Coca Cola: ‘Ke Kou Ke Le’ (可口可乐): ‘tasty and joy’ • Trademark filings take about 9 -18 months to complete the registration www. dezshira. com

Section Four Protection at Customs

Dire straits & clever pirates Increased fear of infringing products due to increased tendencies of: Transshipments Concealed parcels Small and mailed parcels Passenger luggage www. dezshira. com 2021/5/18 www. dezshira. com 40

Essence • Customs protection with General Administration of Customs of China (GACC) affords protection to: • TM • PAT • COP • Through a protection ON REQUEST and EX OFFICIO www. dezshira. com 2021/5/18 www. dezshira. com 41

Customs protection ON REQUEST Detention of goods suspected of infringement of an IPR holder who applied to the Regulations. • Customs detain but not inspect the goods • The IPR holder needs to file a suit while goods are detained PASSIVE PROTECTION www. dezshira. com 2021/5/18 www. dezshira. com 42

Customs protection EX OFFICIO Provided the IP is registered with GACC, there will be detention of goods and • Custom suspends clearance • Informs IP holder • Detains goods on request of IP holder • Impose fines and investigates further PRO-ACTIVE PROTECTION www. dezshira. com 2021/5/18 www. dezshira. com 43

Link your IP to Customs Register the relevant IP with GACC as soon as possible Features: • Government fee: 800 RMB • Duration: the lesser period of the IP • Time: 1~3 months • Documents proving IPR ownership • Blacklist of known infringers (where applicable) www. dezshira. com 2021/5/18 www. dezshira. com 44

Recordal requirements Online and/or certified mail application - IPR holder’s info - Licensee’s info - Authorized manufacturer - Copy of IP - Images - Bank account details - Blacklist of known infringers if known www. dezshira. com 2021/5/18 www. dezshira. com 45

After submitting documents - Data processed and saved Customs will notify person in charge upon infringement Short span of days to show up and instruct Customs Detention www. dezshira. com 2021/5/18 www. dezshira. com 46

SAIC is accessible! www. dezshira. com 2021/5/18 www. dezshira. com 47

GACC is accessible! www. dezshira. com 2021/5/18 www. dezshira. com 48

Thank you! Riccardo Benussi riccardo. benussi@dezshira. com www. dezshira. com 2021/5/18 www. dezshira. com/de 49

Additional Online Resources www. china-briefing. com www. asiabriefing. com www. india-briefing. com www. vietnam-briefing. com www. aseanbriefing. com www. dezshira. com 2021/5/18 www. dezshira. com 50

Multimedia & Social Media Add us on We. Chat DSA_China Find us on Linked. In Dezan Shira & Associates, Asia Briefing Media, China Briefing Follow us on Twitter @Dezan. Shira @Asia. Briefing @China. Briefing Facebook Pages Dezan Shira & Associates, Asia Briefing Media www. dezshira. com