FAQ on IP in China
The China IP SME Helpdesk is a project launched in 2008 by the European Union in order to assist SMEs in protecting their Intellectual Property (IP) when doing business in or with China. During the past eight years of its operation, the Helpdesk has received thousands of questions from SMEs representing all industry sectors and EU Member States about how to protect, manage and enforce their Intellectual Property Rights (IPR) in China. This page gives a snapshot of the most frequently asked questions and provides brief answers to them. The information contained in this FAQ is non-exhaustive, but aims to clarify the basics. For further details, you can always download our guides, contact the enquiry helpline via question
china-iprhelpdesk [dot] eu (question[at]china-iprhelpdesk[dot]eu) or seek advice from legal professionals.
The China IPR SME Helpdesk (Helpdesk) is a project co-funded by the European Union to support European Small and Medium-sized Enterprises (SMEs) in protecting and enforcing their intellectual property rights (IPR) in China including mainland China, Hong Kong, Macau and Taiwan.
The Helpdesk provides the following services, free of
charge:
We provide replies to IP-related enquiries within three business days. Please send your questions to question
china-iprhelpdesk [dot] eu (question[at]china-iprhelpdesk[dot]eu)You can participate in on-site trainings organized across the EU and China. You can also join our webinars (online training) in front of your computer. For our events calendar, please visit the Events section of this website.
You can also download practical IP guides focusing on general and industrial IP issues as well self-learning tools from our website.
We can offer tailored training on IP in China from our offices in Beijing, if there is a topic that your organization is interested in learning more about, please contact us at the email address above.
Yes, all our services are free of charge for SMEs and intermediaries from the European Union.
The Helpdesk operates an Enquiry Helpline that can be reached via: questionchina-iprhelpdesk [dot] eu (question[at]china-iprhelpdesk[dot]eu) or the following link. Upon contacting us, you will receive a reply within three working days. You can also call us at +86 (10) 6462 0892, from 9am to 6pm, China Standard time. You can also schedule an appointment for one-on-one consultation at our Beijing office.
Yes, the China IPR SME Helpdesk office is based in downtown Beijing at the premises of the European Chamber of Commerce in China. You can visit us during working hours or schedule an appointment via the contact points mentioned on the website.
The project provides first-line advice and resources to help you navigate the IP system in China, but we do not handle registrations, negotiations and other specialized legal services. We cannot draft a contract for specific cases, but can help you identify the key points that you should watch out for or discuss with you lawyer. A simple Non- Disclosure Agreement (NDA) template is also available for your use.
Yes, the European Union has the following projects to support SMEs with IP-related information in Europe, India, South-east Asia and Latin-America.
The China IPR SME Helpdesk only provides support and advice related to IPR. For other contacts please refer to the question below.
European Union Chamber of Commerce in China
Bilateral chambers of commerce and trade support organisations
Embassies and Consulates
Intellectual Property Rights are legally enforceable rights over the use of inventions or other creative works. As per the definition of the World Intellectual Property Organisation (WIPO - http://www.wipo.int/about-ip/ en/), “IP is protected in law by, for example, patents, copyright and trademarks, which enable people to earn recognition or financial benefit from what they invent or create. By striking the right balance between the interests of innovators and the wider public interest, the IP system aims to foster an environment in which creativity and innovation can flourish”.
Trade marks, invention patents, utility model patents (UM), design patents, copyrights, trade secrets, geographical indications (GI), new plant varieties, layout designs of integrated circuits and user graphic interfaces (UGI).
IP, as intangible assets, are key to the competitiveness of your business in the global economy. IP is a primary method for securing a return-on-investment in innovation, creativity and reputation and is particularly relevant to SMEs as they internationalise their businesses to areas such as Mainland China. Apart from helping you protect your innovations from competitors, IP assets can also be an important source of cash-flow for SMEs through licensing deals or IP sales. They are also a significant pull-factor for attracting investors.
In China, local registration is necessary in most cases, to protect your IP and the country operates a first-to-file system. Hence, an IP protection and management strategy should be put in place at least a year beforehand (in order to finish the necessary IP registrations; without registration, you can’t enforce your rights in most cases), if your company has short to medium-term plans to do business in or with China, including if you wish only to manufacture in China. For the protection of your rights, it is highly recommended that you register your rights before you attend trade fairs, meet with potential partners or start to sell online. Once you entered the Chinese market you will most likely have limited options to take preventative action or the cost and risk will be higher.
There are several key differences between Chinese and European IP laws, but China has developed comprehensive systems of IP laws that are generally in line with international standards. It is important to note that IP rights are territorial, meaning that IP is enforceable in China only upon valid domestic registration. Please refer to our guide about IP Comparison between China and Europe.
Yes, in terms of IP laws, Mainland China, Hong Kong, Macao and Taiwan are separate jurisdictions, thus specific regulations apply. Please refer to our IP Factsheets for additional details.
The Helpdesk – as a service with public character – would not be able to provide you with a list of IP lawyers/firms, but we strongly recommend that you hire a lawyer with competence and experience in handling IP cases in China. You can also find additional tips in the Helpdesk’s How to Find the Right Lawyer guide.
Recently, many SMEs have been reporting to the Helpdesk that they had received unsolicited e-mails from trade mark agents or ‘government offices’. Be aware that genuine trade mark agents seldom approach companies proactively and official Chinese authorities never do so. In case you receive a suspicious e-mail that suggests you should take immediate action; read the message carefully, verify the sender of the e-mail and the legitimacy of the information. It is recommended that you contact the Helpdesk or consult a lawyer before taking any action. You can also find additional tips in our “How to Identify and Handle IP Scams” guide.
A trade mark is a sign that serves the specific and primary purpose of identifying the origin of goods or services, thus allowing the consumers to distinguish goods or services of one producer from those of another. The sign may be composed of words, devices, letters, numerals, three-dimensional signs (shapes), combinations of colours, sounds or any combinations of the above.
In order to enable you to be owner of the trade mark in China, you need to register it in China. A Europeregistered trade mark is not protected in China. Remember that China operates a first-to-file system, meaning that the person or company first submitting a valid application will own the mark.
The cost for domestic registration with the China National Intellectual Property Administration (CNIPA, previously the China Trademark Office - CTMO) is RMB 300 (approx. EUR 40, excluding lawyer fees) for one class, covering up to 10 items of goods/services. An extra RMB 30 (approx. EUR 4) is charged per additional item. The basic filing fee for trade mark registration by a trade mark agent/law firm in Mainland China is about EUR 400 – 600 and upwards, depending on the service provider you use.
Foreign applicants without residency or place of business in China are required to submit trade mark applications to the CNIPA through a local Chinese trade mark agent. Registrations must be made in Chinese (Mandarin).
The CNIPA has an online database system which includes all recorded trade mark agents. For additional tips and resource on selecting a trade mark agent, please refer to the Helpdesk’s “How to Find an Intellectual Property Agent” guide.
You can register a trade mark in China in different languages and versions. It is highly recommended to register your trade mark in three versions 1) in original language (Latin letters); 2) in Chinese characters; and 3) the symbol or logo. Please note that different versions of the same trade mark are considered as separate trade mark applications.
As the registration of a trade mark in Roman characters does not automatically protect the trade mark against the use or registration of the same or similar trade mark written in Chinese, it is highly advisable to register a Chinese version of a foreign trade mark. Furthermore, if there is no existing Chinese character name for a foreign brand, it is very likely that one will be adopted by local consumers either by way of translation or by transliteration, and not necessarily with the connotations or image that the foreign company would wish to convey: adopted monikers can in some instances be unflattering. There are three ways to do this:
• A literal translation works when the trade mark has a distinctive meaning. For example, Apple Computers chose the brand name ‘Ping Guo’ (苹 果), which is Chinese for ‘apple’. The disadvantage of this method is that the Chinese characters will sound different from the original trade mark. This means that marketing time and money will need to be spent on building the association between the Roman character trade mark and the Chinese character trade mark.
• A phonetic translation involves creating a Chinese character name that sounds like the trade mark. Pinyin is the official Chinese phonetic alphabet that uses Roman characters, which can be used to create the transliteration. For example, ‘Audi’ is known as ‘Ao Di’ (奥迪). This method is preferable when the trade mark already has a reputation amongst Chinese speaking consumers. However, care must be taken while choosing a phonetic version of a foreign mark, because the Chinese characters may have an undesirable meaning in one or more of the six major Chinese dialects. • The best trade marks are those that sound the same and also make reference to a defining characteristic of the brand or have a positive meaning in Chinese culture. For example, after considering hundreds of combinations of the four syllables that make up its name, Coca-Cola finally settled with ‘Ke Kou Ke Le’ (可口可乐), which means ‘taste and be happy’.
The registration examination done by CNIPA takes up to nine months, which is followed by a three-month opposition period, if no opposition is received within that period, the trade mark will be registered.
Your trade mark registration in Europe does not provide protection in China. However, an international registration system is available under the Madrid Protocol through the World Intellectual Property Organisation (WIPO). Both China and the Member States of the European Union (except Malta) are party to the Madrid Protocol. Under the Madrid Protocol, the application for extension to China is based either on the trade mark application or registration. Maltese companies can apply for such an extension through the Office for Harmonization in the Internal Market (OHIM).
The Helpdesk has developed a number of resources on trade marks protection, such as Trade Mark Guide, How to conduct a trade mark search, E-learning modules on trade marks as well as webinars. These resources are all available free of charge from the website.
Enforcement through Courts or the Administration of Market Regulation (AMR) are both possible
• In general, the administrative channel is relatively fast and cost effective, but these organs can only issue confiscation and destruction orders and fines.Where infringement is significant administrative organs can refer the case to the Public Security Bureau (PSB) to bring criminal charges against the infringer, which is usually a highly effective measure in deterring further infringement. No damages can be claimed.
• The judicial channel can lead to compensation in damages but is time consuming and more expensive. The question of the most appropriate enforcement method depends on the specific case and claims. All types of enforcement actions can be combined to achieve optimal results - an administrative raid can be followed by a civil litigation and a negotiation can be ‘stimulated’ by the threat of a criminal action.
It is recommended to consult a specialised lawyer before taking enforcement actions.
It is possible to acquire the registered trade mark under certain circumstances, depending on the particular case.
• You can always try to buy back the trade mark and negotiate a price with the current owner. It is recommended that you use an intermediary for the negotiations and have a thorough assessment of the appropriate price.
• In case the trade mark was registered in bad faith without intent to use, you can file a request for cancellation of the registration (or file an opposition before registration). The following circumstances may be easier to demonstrate bad faith: the registered owner had a previous contractual or business relationship (or any other relationship) with you and thereby knows of the existence of your prior mark, the registrant has a history of filing bad faith marks. You should prepare as follows: i. Conduct the trade mark search as soon as possible to check the actual status of the trade mark registration and when it has been filed; ii. Consult with a lawyer in China to assess the potential success rate of a cancellation or opposition action of the trade mark, they will advise you on the evidence that may be useful to your case and the likelihood of success in the circumstances. iii. If you choose to file a cancellation or invalidation request it may be possible to negotiate a lower price for the purchase of the trade mark. If the asking price is too high then you may decide to wait until the cancellation procedure concludes, but in the meantime,you may be unable to import or export your goods to or from China – doing so may incur problems with customs or lead to litigation.
• Another basic requirement of trade mark law is the obligation to use the trademark after a certain period following registration. In China, this period is 3 years. Use of a trade mark is defined as ‘use on goods, packages or containers, or on trading documents, in advertising, an exhibition or any other business activities’. If the owner of the registered trade mark failed to use it as described above, then you can request the cancellation of the trade mark due to non-use. Note that the procedures above are more costly and timeconsuming than registering the trade mark, thus an early registration of your trade mark is strongly recommended.
A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. A patent prevents an invention from being commercially made, used, distributed or sold without the patent owner’s consent. The patent system in Mainland China includes the following kinds: invention, design and utility models (UMs) patents. For detailed information on patents, download the Helpdesk’s “Guide to Patent Protection in China”.
Yes, the IP system in China provides for the protection of design patents. Please refer to the ‘Design Rights’ section below for details.
An invention patent is granted for new technical solutions or improvements to a product or process, provided that the technical solutions have a practical applicability. To be patentable an invention must be ‘novel’, which means that, in general, there must be no disclosure of the invention prior to the filing of the application. Further requirements are “inventiveness” and “industrial applicability”. UMs are very similar to invention patents, but are only subject to a simple formal examination of the application before being registered. This means that UMs are granted more quickly, but the term of protection is shorter and substantive requirements will in general be examined once the owner tries to enforce them. Design patents protect the aesthetic features of a product including its shape, pattern and colour. Like UM they only undergo a simple formal examination,and thus are granted relatively quickly. More details regarding design patents can be found in the ‘Design Rights’ section below.
There are two ways to file a patent:
• File a patent application in China directly with the China National Intellectual Property Administration (CNIPA). Foreign applicants must use a local patent agency for filing a patent application. Foreign Invested Enterprises (FIE) however, can apply for patents in China without an attorney but this is not generally recommended.
• File a patent application under the Patent Cooperation Treaty (PCT), selecting China as one of the designated states. A PCT application can be filed with the European Patent Office (EPO) or any national patent office within the EU. The applicant then has to initiate the ‘national phase’, i.e. the procedure with CNIPA, no later than 30 months from the priority date.
Invention patents are normally granted within 3 to 5 years and are valid for 20 years starting from the filing date. UMs patents are normally granted within 1 year and are valid for 10 years starting from the filing date, design patents are normally granted within 6 months and are also valid for a period of 10 years.
The basic government fee for filing an invention patent is RMB 900 (approx. EUR 120). For UM and design patents the fee is RMB 500 (approx. EUR 65) excluding lawyer’s fees. Annuity fees are required to maintain a patent’s validity.
One of the requirements for patent protection in China is that the invention is “novel” meaning that it hasn’t been disclosed to the public anywhere in the world.
• Consequently, if your patent has already been published in a Patent Gazette abroad, for example, then you will not be able to patent it in China. • If you have filed a patent application in any EU Member States, then you can file an application in China within 12 months of the European application date in case of invention and UM patents, and six months in the case of design patents.
• If you have filed a patent application via the Patent Cooperation Treaty (PCT), then within 30 months you can still initiate the national phase with the State Intellectual Property Office (SIPO) of China.
Copyright is a legal term used to describe the rights that creators have over their literary and artistic works. It includes ‘moral rights’ which are personal and cannot be waived, licensed or transferred and ‘economic rights’ which give you the exclusive right to exploit the work for economic gain, including the right to reproduce, distribute, perform and use other means to exploit the work. Copyright protects only the tangible expression of an idea (a ‘work’), not the idea itself. Additional information on Copyrights is available from the Helpdesk’s “Guide to Copyrights in China.”
Most types of creative works protected by copyright in Europe are protected as well in China. Traditional types of creative works such as books, music, recordings, plays, films, physical art works etc., enjoy copyright protection in China. Other works such as works of choreography, acrobatics, calligraphy, quyi (a traditional Chinese performance art form), and databases also enjoy copyright protection in China. Industrial and graphic designs, software (computer programs), applied art, architectural designs can be protected by copyright. The basic principle for copyright protection is that the work is original and reproducible
Copyright automatically arises at the creation of a work and the rights are held by the individual or legal entity who created the work. Thus, it is important to clarify in labour contracts the ownership of the copyright for works that has been created during employment. In addition, preserving evidence (e.g. copies of the work) is essential in proving the ownership of the copyright. In order to let others know that you own a certain copyright, indicate the universal symbol ©, the name of the author and the year of creation on published works. For example, in the case of this publication, you can see © China IPR SME Helpdesk 2020.
It is not mandatory to register a copyright in order for it to be enforceable in China, but a voluntary registration system is available and recommended to facilitate enforcement actions. A copyright registration certificate serves as prima-facie proof of your right, and it can therefore be used as the basis for a successful platform complaint against infringers.
The enforcement process is made much easier with a registered copyright. A certificate of copyright registration can be used as the basis of a successful take-down action on ecommerce platforms (which for many SMEs is the most cost and time efficient method of tackling infringement) and therefore voluntary registration of valuable copyrights is recommended.
The author of the work can apply for copyright registration with the Copyright Protection Centre of China or online at www.ccopyright.com.cn. The application must be filed in Chinese and it costs RMB100-2000 (approx. EUR 13- 260) depending on the type of work.
According to China’s law, a design is “the shape, pattern, or the combination thereof, or the combination of the colour with shape and pattern, which are rich in aesthetic appeal and are fit for industrial application”. An application for a design patent includes any of the following external features of a product: 1) the shape of a product; 2) the pattern of a product; 3) the shape and pattern of a product; 4) the shape and colour of a product; 5) the shape, pattern and colour thereof. While most items with a distinctive exterior appearance can be covered by a design patent, the following cannot: two dimensional trade marks, parts of a design which cannot be used or sold separately and item which contravene local law or have a negative effect on public interest.
A design can be protected under China’s Patent Law, by registering for a design patent at the China State Intellectual Property Office. The application fee is RMB 500 (approx. EUR 65) and the process usually takes around 6 months. Subject to annuity payments, the design is protected for a non-renewable term of ten years. For further information on the registration process and additional consideration, refer to the Helpdesk’s “Understanding and Using China’s Design Patent” guide.
The basic requirement of design registration in China is novelty. This means that the design must be new and not have been disclosed to the public through sales, advertising or any other means anywhere in the world before the application is filed in China. If the design was disclosed before the design patent application was filed, the patent could be invalidated later. Therefore if you plan to pursue a design patent in China, make sure your design is not disclosed in your home country or elsewhere in the world before the application has been made.
• Identify your key IP assets (trade marks, patents, copyright) and register your rights in China at the earliest possible opportunity. Depending on the type of IP, the registration process can vary from several months (e.g. copyright or design patent) to several years (e.g. invention patent), so advanced planning before market entry is needed.
• Make sure that the brochures and other marketing materials that you use at the trade fair have copyright notices on them.
• If you are planning to have business meetings with potential partners, check their IP background and bring a few Non-Disclosure Agreements (NDA) to the fair that you can sign before entering into discussions.
• Catalogue your trade secrets before the trade fair so that you can be conscious about not disclosing them at meetings or discussions.
• Prepare well for the trade fair or matchmaking events by researching the exhibitors, potential business partners and the exhibitors’ contracts.
• Trade fairs are also a good opportunity for monitoring the market for any infringement of your products. In case you would like to take action on the ground, prepare all ownership certificates, research the contact of the IP complaint centre operating at the trade fair, and notarize acquired evidence of infringements.
It is advisable that you sign an NDA with any third party to whom you plan to reveal confidential information such as sensitive product information, designs and sketches, business strategy, client information, etc. before doing so. NDAs are quick and inexpensive, and a basic template will require little modification for use with different products and clients. NDAs are widely used in China and well-accepted by Chinese courts, so a Chinese third party that is unwilling to sign an NDA is likely not a trustworthy potential business partner and should be treated with caution.
Sometimes an NDA on its own is insufficient to encourage the respect of your IPR, especially for companies in the manufacturing industry or those sourcing their products from China. This is because not every single product will be covered by patents or other forms of registered IPR. Under these circumstances, a ‘non-disclosure/non-use/ non-circumvention agreement’ (an ‘NNN’ agreement) may be used: 1. The non-disclosure provisions will cover the unauthorised disclosure of confidential information. 2. The non-use provisions will state that the Chinese manufacturer cannot produce your product or any similar products for anyone other than you. These provisions will prevent the Chinese manufacturer from making or selling similar ‘copycat’ products without your authorisation. 3. The non-circumvention provisions will prevent the Chinese manufacturer from by-passing the protection or circumvention means or technologies that you put into your product.
The specific regulations related to the internet stipulate that if the IP-protected material is uploaded without the right holder’s consent, he/she may request in writing that the internet service provider (ISP) removes the infringing work, or removes the relevant website from the ISP’s network and disables access to the copyrighted material. This kind of written warning is known as a ‘take-down notice’. The general rule is that if the ISP removes the infringing content following a ‘take-down notice’ it will not be held liable for any further compensation. If however, the ISP knew or should have known about the infringement, the ISP will be held liable jointly with the person who uploaded the infringing content. In order to avoid liability, Chinese ISPs have developed systems to aid take-down notices. For a successful take down action, you will have to provide the ISP with the registration documents of your Chinese trade mark, patents or copyright.
E-commerce websites usually have dedicated systems for dealing with product infringing IPR. For Alibaba and Taobao, for example, the procedure is free of charge and can be completed within 1-2 weeks.
For further information on notice and take-down procedures, consult the Helpdesk’s “How to Remove Counterfeit Goods from E-commerce Websites in China” guide.
In order for the information to be a trade secret, it must 1) be non-public - it must not be known by the general public or by competitors; 2) have actual or potential commercial value - it must give the owner a competitive advantage or be capable of generating economic benefit; and 3) guarded by confidentiality measures - the owner must take reasonable measures to protect the confidentiality of the information.
Prevention is the key to protection. Once a trade secret is disclosed, the damage is already done and it is often very difficult to recover its value, even if you succeed in litigation. You are advised to:
• Identify and catalogue your trade secrets.
• Document trade secret protection measures you take, in case of a dispute later on. Implement a trade secret protection policy within your company, making sure your employees understand your expectations. Include confidentiality clauses in the contracts with employees and sign non-competition agreement with key employees having access to the company’s trade secrets.
• Conclude non-disclosure agreements before entering into negotiations with third parties.
When doing business in China, it is essential to protect company names, and trade marks through domain name registrations under the Chinese top level domain .cn. European SMEs can register for this using their European company data and business certificates.
Domain name registration must be completed through an accredited .cn registrar. Lists of accredited international registrars can be found here: http://www1.cnnic.cn/index.htm. Lists of Chinese registrars can be found here: http://www.cnnic.cn/. The registration can be completed within 1-2weeks and typically costs EUR50- 100 per domain name per year.
For additional information on domain protection and dispute resolutions, download the Helpdesk’s “Registering and Protecting Chinese Domain Names” guide.