In August 2017, US President Donald Trump executed an administrative order to initiate an investigation against China in accordance with Section 301 of the Trade Act of 1974, on the basis that “China has stolen plenty of intellectual properties from American companies as well as forced American companies which plan to enter Chinese market to build unfair joint venture relationship with Chinese companies”. Thereafter, on September 8, 2017, twelve Chinese government authorities related to intellectual property protection, including State Intellectual Property Office (“SIPO”), Ministry of Public Security (“MPS”), State Administration for Industry and Commerce (“SAIC”), Supreme People’s Court (“SPC”) and Supreme People's Procuratorate (“SPP”), jointly issued the Action Plan on Intellectual Property Protection for Foreign-invested Companies, initiating a four-month nationwide campaign from September 2017 to December 2017 to combat infringements and criminal violations against intellectual property rights of foreign-invested companies. Whether a coincidence or not, the above two news may seem a little opposite, which draws much attention on the intellectual property protection for foreign-invested companies in China.
In preparation for its recent article Lessons from Donald Trump and Michael Jordan on Trademarking in China focusing on current status and strategies of trademark protection in China for foreign-invested companies, South China Morning Post (“SCMP”) interviewed several well-known experts in this field, including Charles Feng, partner of East & Concord Partners, and Liao Fei, partner at international law firm King & Wood Mallesons.
China was dubbed as “a haven for trademark infringement” by Alan Garten, one of Trump’s lawyers. Although President Donald Trump has no current business operations in China, he has registered more than 100 trademarks in multiple Classes in China. Such early and wide registration of trademarks has made Trump a textbook example of how a foreign-invested firm can protect its brand in China. Charles Feng also emphasized the importance of registering trademarks early and widely pointing out “You have to register under as many categories as possible, this is a very unfortunate fact, but if you don’t do so, you might pay a bigger price later”.
There are still certain legal steps for foreign brand owners to contest pre-emptive registrations and to protect their own legitimate rights through opposition and invalidation proceedings. Feng added that “The brand owners have to raise oppositions within the three-month opposition period once they find out their brand has been registered by others as well as to apply for invalidation against the registered trademark”. Feng also noted that there has been a shift in the Chinese courts to decide in favor of the plaintiffs bringing actions to protect IP rights in China, “previously, the cost of defending one’s brand was higher than that of infringing others’ trademarks, this situation is changing”.
Click here for the article of South China Morning Post: