Patents, trade marks, copyright and designs in China: overview
A guide to intellectual property law in China. The Patents, trade marks, copyright and designs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.
To compare answers across multiple jurisdictions, visit the Patents, trade marks, copyright and designs: Country Q&A tool.
This Q&A is part of the global guide to intellectual property law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-guide.
Rules and methods of intellectual activities.
Diagnosis and treatment methods of illnesses.
Animal and plant varieties or substances obtained through nuclear transformation methods.
A design which has a major marking effect on the patterns or colours of graphic print products, or a combination of both patterns and colours.
The State Intellectual Property Office (SIPO). The procedure of granting an invention patent has the following five steps: reception, preliminary examination, publication, substantive examination, and grant.
The procedure of granting a utility model or an industrial design includes only three steps: reception, preliminary examination, and grant.
For more guidance, visit the official website of SIPO (www.sipo.gov.cn/zhfwpt/zlsqzn).
An application might be refused if the subject matter is not patentable, or does not meet the legal requirements of being novel, inventive and capable of industrial application.
There is no opposition proceeding against a patent application in China's patent Law, only an invalidation proceeding against a granted patent. Once a patent is issued, any individual or entity can file an invalidation request against it with the Patent Re-examination Committee, on grounds of failing to satisfy the protection requirements.
If the following acts have been carried out without obtaining a licence from the patentee:
Manufacture, use, offer for sale, or importation of the patented products for the purpose of business.
Using the method of a patent.
Use, offer for sale, or importing products obtained directly by using the method of a patent.
Normally, patent infringement cases are heard by the provincial intermediate courts, or other intermediate courts and local courts designated by the Supreme Court, at the place of the defendant's domicile or the place where the infringement takes place. Patent cases in Beijing, Shanghai, and Guangdong Province (excluding Shenzhen) are governed by their respective IP courts.
Defences can be:
Statutory limitation and exception.
Termination of protection term.
The limitation and exception stipulated in law includes:
The "first sale" doctrine.
Prior use right defence.
Temporary entry into or crossing China.
Scientific research and experiment.
Notably, the invalidation defence can only be filed as an administrative procedure with the Patent Re-examination Committee, rather than the court.
A protectable mark must be distinctive enough to distinguish the source of the goods or services and must not conflict with other legitimate rights.
Subject matter that can be protected includes text, graphics, letters, numbers, three-dimensional marks, colour combinations and sounds, and a combination of these elements.
Registration is advisable and important, since it provides legal certainty and reinforces the position of the right holder. Registration is also a legitimate record of ownership in a lawsuit, IP transaction or other scenarios.
And an unregistered trade mark can only be protected if it is well-known in China, which usually needs a lot of evidence to prove.
The registration service is provided by the Trademark Office under the State Administration for Industry and Commerce (SAIC). Guidance is available on the English website (www.saic.gov.cn/sbjenglish/sbsq_1/zclct).
Absolute grounds for refusal include that the mark:
Is identical or similar to the country name, national flag, or military flag.
Is racially discriminatory.
If a mark is a generic name of the goods or services, merely directly describes the characteristics of the goods or services, or lacks distinctiveness, it might be registered if obtains distinctiveness after use.
Relative grounds for refusal include that:
The mark is identical with or similar to an earlier registered mark for identical or similar goods or services.
The mark conflicts with earlier legitimate rights.
When a trade mark application passes preliminary examination, it is published for opposition for three months. For registered marks, invalidation can be filed within five years from the time of registration.
Anyone can trigger the proceedings on absolute grounds, while only an interested party can challenge a mark based on relative grounds (see Question 14).
An action can be brought if the alleged infringing mark, used as a trade mark for a business purpose without a licence, is identical with or similar to another trade mark, for identical or similar goods or services, causing a likelihood of confusion.
Other grounds include:
Selling products with the alleged infringing mark.
Forgery or unauthorised manufacturing of trade marks.
See Question 9.
There is a registration system for copyright (not including related rights), provided by the Copyright Protection Centre of China (CPCC, an affiliate of the National Copyright Administration or NCA) and NCA's branch offices at provincial level.
The CPCC alone accepts applications for software registration.
Although it is not mandatory, registration is advisable, since the certificate of registration is easy proof of copyright ownership in a lawsuit, IP transaction or other situations. Guidance on the application procedure is on the CPCC's official website, www.ccopyright.com.cn.
Copyright protection starts automatically at the moment the work is created. Moral rights are permanent, except the right of divulgation which has the same term as economic rights, that is, up to 50 years after the death of the author.
The duration of related rights is 50 years since obtaining the rights, except that the moral rights of performers are permanent.
In principle, the first instance is in the jurisdiction of intermediate courts or some grassroot courts designated by the supreme court, at the place of the defendant's domicile or the place where the infringement takes place. In Beijing, Shanghai and Guangdong (excluding Shenzhen), software copyright cases are filed with the intellectual property courts.
No casual connection between the copyright work and the alleged infringing work.
No copying of the substantial element of the original work.
No copyright protection for the subject matter, due to lack of originality or the expiration of the protection term.
The acts constitute free use or statutory licence, as stipulated in the law on limitation and exception.
There is no such judicial procedure. If an infringement concurrently does damage to public interests, the right holder can complain to the relevant copyright authority, which can:
Order to cease and desist.
Confiscate illegal earnings.
Confiscate and destroy infringing copies, materials, tools and equipment for making infringing copies.
Impose a fine.
There is no separate design law in China. A design can be protected as a design patent under the Patent Law if it satisfies the criteria of patent protection (see Question 1) and does not conflict with other prior legitimate rights. .
There is no separate design law in China. A design which meets the criteria can be copyrightable (see Question 22).
Otherwise, it might be protected by Unfair Competition Law, for example, distinctive packaging or decoration of goods or services well-known in China.
Under the Law against Unfair Competition, an action can be brought if the same or similar packaging or decoration of well-known goods or services is used for the same or similar goods or services without the right holder's consent, and is likely to confuse the relevant customers. For copyright infringement, see Question 25.
Under the Law against Unfair Competition, defences can be:
That the packaging or decoration does not reach the threshold for protection.
It is an independent design.
It does not cause confusion.
Normally, the key issue is whether the goods or services are well-known in China.
For copyright cases, see Question 27.
Trade secrets and confidential information
Proceedings can be brought when there is unauthorised disclosure, acquisition, use or allowing of others to use in a manner contrary to honest commercial practices. The dishonesty includes acquisition of trade secrets by theft, inducement, coercion or other illicit means, and violation of a confidential agreement.
Generally, the first instance is the intermediate courts or some grassroots courts designated by the supreme court, at the place of the defendant's domicile or where the infringement takes place. In Beijing, Shanghai and Guangdong Province (excluding Shenzhen), trade secret cases involving technology knowhow are filed with the intellectual property courts.
See Question 43.
Xie Guanbin, Founding Partner
Lifang & Partners
Professional qualifications. China Licensed Attorney, 1993; China licensed trade mark attorney, 2000
Areas of practice. Intellectual property law; anti-trust and unfair competition
- LLD, Economic Law, Law School of Peking University.
- LLM, Economic Law, Law School of Wuhan University.
- LLB, Economic Law, Law School of Wuhan University.
- Advanced studies on Intellectual Property and Technology Transfer (Japan).
- Intern lawyer with Chandler LLP (USA).
- Represented a Taiwanese company who won an appeal at Beijing High People's Court against Intel, in an MPU patent infringement dispute.
- Defended a vital patent of the French catalyst maker Rhodia and represented it before the Supreme Court to stop infringement.
- Helped China's biggest property insurance company to retrieve the domain name "PICC".
- Successfully defended a famous Taiwanese finance software company against accusations of infringement before the Supreme People's Court.
- Represented China Unicom to win China's first anti-monopoly judicial case relating to abuse of dominant market position, and Qihoo 360 to appeal to the Supreme People's Court in the high profile anti-trust and unfair competition dispute with Tencent.
Languages. Chinese, English
- Arbitrator of WIPO, Beijing Arbitration Commission, Arbitrator for international commercial cases of Beijing Arbitration Commission.
- Expert of the Domain Name Disputes Resolution Center, China International Economic and Trade Arbitration Commission (CIETAC).
- Tutor for graduates, Tsinghua University.
- Research fellow and tutor, Peking University.
- Commissioner of the Intellectual Property Commission of the All China Lawyers Association.
- Volumes on patent, trade mark and copyright cases, China Law Press, 2010 - Arbitration of IP Matters and Relevant Issues, Beijing Arbitration Quarterly, 2012(4).
- Comments on the Second Instance Decision of Qihoo v. Tencent Abuse of Market Dominance Disputes, Journal of Science, Technology and Law, 2014(6).
- A Milestone in SEP-related Antitrust Law Enforcement: Qualcomm case review, Price Supervision and Anti-Monopoly in China, 2015(3).
Sun Xi, Partner
Lifang & Partners
Professional qualifications. Chinese Licensed Attorney; Chinese Licensed Patent Attorney
Areas of practice. Intellectual property law
- LLM, intellectual property law, Renmin University, 2004.
- Bachelor of Engineering, Donghua University, majored in polymer science and engineering, 2002.
- Represented Hyosung in patent infringement and invalidation dispute with Hitachi Omron Financial System Co. LTD relating to ATM machines.
- Represented Rhodia Chimie S.A.S in patent infringement and invalidation disputes with Hysci (Tianjin) Specially Materials Co., Ltd.
- Representing Qihoo 360 in unfair competition disputes with Tencent (heard by a five-member bench of the Supreme People's Court).
- Represented Zhongwei Bus & Coach Group in a bus design patent invalidation action against Neoplan GmbH (among the Top 10 Invalidation Petitions of 2012 selected by the Patent Re-Examination Board).
Languages. Chinese, English
- Member of All-China Lawyers Association.
- Member of Beijing Lawyers Association.
- Member of All-China Patent Agents Association.
- Case study - Test of Post Employment Service Inventions, www.chinaiprlaw.cn, 2014.
- On the Judgment of Similarity of Designs for an Actual Product and its Model, 2013.
- Contributor, Knotty Issues and Cases Regarding Copyright and Patent, Peking University Press, 2012.
- Contributor, Comments and Recommendations on Foreign-related Cases of Patent, China Law Press, 2010.
Zhang Bin, Partner
Lifang & Partners
Professional qualifications. Chinese Licensed Attorney
Areas of practice. Intellectual property law
- LLM, Civil and Commercial Law, Law School of Peking University.
- LL.B, Intellectual Property Law, Law School of Northeastern University
- Represented Microsoft in suing multiple large company end users for copyright infringement of Microsoft software with very satisfactory results, and awarded with the Best Practice Award. One of the cases was among the top ten software copyright suits of 2011, and another was elected into the Top Ten Intellectual Property Cases of 2012 by the Beijing High Court.
- Represented a Danish fashion group in the JACK&JONES trade mark infringement case for stopping an internet shop from selling counterfeits. It was published by China's Supreme Court in 2013 as one of the three model cases, meant for providing guidance for subsequent judicial practice relating to trade mark disputes.
Languages. Chinese, English
- Commissioner of Trademark Professional Board of Beijing Lawyers Association.
- Research fellow, Beijing Intellectual Property Institution (BIPI).
- Patent Law in Cases, contributor, Intellectual Property Press, 2008.
- Superfluity Establishing Principle in Patent Infringement Judgment, www.chinaiprlaw.cn, November 2006.
- Balance of Interests in Patent Infringement Judgment, China Intellectual Property News, December 2006.