If your brand is being misused in China, you have several options to enforce your intellectual property (IP) rights.
Even if trying to negotiate with the person misusing your brand fails, there are legal avenues you can pursue.
The Chinese IP system is quite different from our own, but if you engage a lawyer with expertise in IP in China, the process shouldn’t prove too difficult.
You have two options for taking action for a trade mark infringement – through the People's Court or through administrative adjudication.
China’s unique dual-track system for the enforcement of IP rights allows you to enforce your rights via the courts or an administrative agency. You may first file a complaint to administrative agency and obtain infringing evidence and then file a case before Chinese court to request for compensation with the evidence you collected via the administrative procedure. However, if you choose to file the litigation before the administrative decision has been issued, the administrative agency will temporally suspend the administrative proceeding and wait for the judgment of the lawsuit.
While litigation in China is not as expensive as it is in Australia, the cost may still add up. In some cases, using an administrative process to combat trade mark infringement might be a quicker and more efficient way to enforce your trade mark rights.
All forms of IP Rights in China can be enforced through civil actions in the courts. In some rare instances, criminal actions can be commenced.
In addition to the People’s Court which has general jurisdiction over IP matters, China has established three specialised courts in Beijing, Shanghai and Guangzhou to handle IP cases exclusively. These courts are staffed by China’s most experienced IP judges.
Judicial enforcement is the most popular method for Western companies because they are more familiar with enforcing their IP Rights in courts. Civil courts can award both injunctions to stop someone else misusing your IP and monetary damages.
You should be aware that discovery – where the two sides of a legal dispute have to exchange information that is relevant to the case – is not permitted in a judicial proceeding in China. This means you would have to rely on private investigation to prove infringement and your resulting economic loss in the judicial proceeding.
Chinese courts offer a relatively fast mechanism for IP Rights enforcement. The time to trial in China is usually about 12 months from the filing of the complaint.
Filing administrative complaints with the State Administration for Industry and Commerce
In some cases you can seek an administrative adjudication for your trade mark case instead of going to the courts.
You can file your complaint to the local State Administration for Industry and Commerce (AIC), which will decide whether to carry out an investigation shortly after your complaint is filed, depending on the strength of the evidence you produce.
This might be appropriate when there is a clear cut case of infringement and you have a certificate of your trade mark registration to support your claim. In some cases, you may be requested to participate to the investigation.
The AIC can make its decision on infringement or non-infringement within several weeks from the commencement of the investigation.
Once the relevant AIC has concluded that trade mark infringement has been committed, it has the power to demand the immediate cessation of any illegal activities, confiscate or destroy all infringing products, labels, brochures and equipment specifically used for manufacturing infringing products.
It can also impose a monetary fine on the infringers. The AIC will retain any fines paid and levied.
It is important to note that in an administrative action, the relevant AIC cannot order the infringer to pay compensation to you.
Compared with court proceedings, an administrative action is generally faster and less costly.
If you are not satisfied with the AIC’s decision, you can apply for administrative review or make an appeal to the court.