China: Options for Enforcement of Intellectual Property Rights in China

Last Updated: 22 February 2006
Article by Meg Utterback

Starbucks, after an almost two year legal battle in the Shanghai No. 2 Intermediate People’s Court, was granted 500,000 RMB for the infringement of its trademark by a Chinese company. The process was not swift and the Chinese company has appealed the ruling. The decision is a victory for foreign intellectual property in China, but it begs the question as to how to get the best and fastest result when infringement occurs. Many foreign companies, when they encounter infringing activity in China, are uncertain as to how to proceed. This article addresses only the "in China" options and does not discuss the other remedies companies can pursue extraterritorially. Those remedies may be more appropriate when the infringing product has already entered the international market.

The discussion below is aimed at ways to stop infringement at the source. Foreign companies in China, after identifying the infringer, have three procedural options: 1) administrative relief, 2) relief through the civil court system, or 3) criminal prosecution of the infringer. Depending on the objective—which may be obtaining injunctive relief, getting monetary damages or sending a message to the marketplace—any one or a combination of these proceedings may be appropriate. This article briefly discusses each of these. Foreign companies should not forget that negotiation may be the fastest and most efficient recourse.

Governing Law and Government Agencies

The key Chinese laws at issue are the Patent Law, revised August 25, 2000, the Copyright Law, revised October 27, 2001, and the Trademark Law, also revised October 27, 2001. Certain judicial interpretations may further assist in understanding the implementation of these laws. See for example, The Provisions Concerning the Application of Laws in Pre-Suit Preliminary Injunction Against Patent Infringements. (1/1/2001) Other laws may apply to a specific product; for example, there are specific regulations relating to the protection of computer software. (Regulations for the Protection of Computer Software (1/1/2002).)

Before undertaking any enforcement action, a foreign company should consider speaking to the relevant Chinese authorities to identify the issue and discuss the planned course of action. Often the company may not get approval or direction, but this added step may serve the company well later. The Chinese administrative agencies involved in intellectual property enforcement include the following: State Intellectual Property Office, Chinese Trademark Office, National Copyright Administration, State Administration of Industry and Commerce, the General Administration of Quality Supervision Inspection and Quarantine, Ministry of Commerce, Ministry of Public Security, Ministry of Science and Technology, and the Customs General Administration.

Administrative Proceedings

When infringement of a trademark, copyright or patent has been identified, the injured company may seek redress through an administrative proceeding. The administrative procedure is faster than the courts, usually proceeding to conclusion within three to six months, depending on complexity, and, thus, it may be less expensive. Unfortunately, the remedy is limited to an order stopping the infringement, ordering the destruction of the infringing product or imposition of a fine. No damages are available.

For trademark infringement, the applicant should apply in writing to State Administration of Industry and Commerce (SAIC) or one of its local bureaus. If the application is rejected, the applicant will be notified within fifteen days. If accepted, SAIC may investigate the allegations, inspect the goods, and obtain relevant documents. Based on that review, SAIC may issue an order or decision enjoining the infringement. Before the decision, the parties are notified and given an opportunity to be heard. A party may appeal the decision to the People’s Court.

For copyright infringement, the applicant should apply to the National Copyright Administration (NCA). The application, if accepted, will trigger an investigation. If rejected, the applicant will be notified within 15 days. Post-investigation, NCA will generate an "Opinion on Administrative Penalties for Copyright Infringement." Before the decision, the parties are notified and have an opportunity to be heard on the proposed decision. A party may appeal the decision to the People’s Court within three months of issuance.

Patent cases are more commonly the subject of civil court proceedings and are usually not submitted to administrative proceedings—most parties seek injunctive relief as well as damages for patent infringement. However, for patent infringement, the applicant can apply in writing to the State Intellectual Property Office. The process here is similar to that for other infringements, in that an investigation is followed by an order against the infringer, with an opportunity to be heard. In complex cases, a hearing may occur. The order may be appealed to the People’s Court. One difference in patent infringement cases is that there is often a conciliation process before the administrative proceeding commences.

Civil Court Proceedings

In civil court proceedings, the injured party can seek immediate redress before suit is filed. A preliminary injunction may be sought before or at the time the lawsuit is filed. To file for preliminary injunction, the applicant must be the owner of the intellectual property right or the exclusive licensee of that right. The application must be filed in writing and must set forth the jurisdiction in that particular court.

Jurisdiction for intellectual property matters resides in the intermediate courts and special intellectual property courts set up in Beijing, Shanghai, Tianjin, Chongqing, Qingdao, Dalian, Yantai, Wenzhou, Fushan, Shenzhen, Zhuhai, Shantou and Xiamen. A few district courts in Shanghai (Pudong and Huangpu) and in Beijing (Chaoyang and Haidian) also have jurisdiction for trademark, copyright and unfair competition, but as a general rule, not patent. Beijing courts seem to see more complicated patent cases, while Shanghai courts have traditionally seen more trademark and unfair competition cases. Factors in deciding jurisdiction include place of business, situs of performance of contract, and situs of infringing activity. If jurisdiction is improper, cases are usually transferred, not dismissed. Thus, forum shopping is quite common and jurisdiction should be carefully considered before suit.

Further, when pursuing a preliminary injunction, the applicant must file a guaranty. When the suit involves seizure or detainment of infringing product, the guaranty may range between 50 to 100 percent of the value of the seized property. In other cases, the court decides the guaranty amount at its discretion as a valuation of the actual or potential harm. The guaranty is usually in the form of a cash payment into the court.

To succeed on a preliminary injunction, the applicant must demonstrate in the application that the infringement is ongoing or imminent, and that the applicant will be irreparably harmed by the failure to immediately enjoin the infringement. If successful, the court will grant the injunction and will issue within 48 hours an equitable award enjoining the activity, which award is immediately enforceable. Preliminary injunctions are relatively rare in China.

Within 15 days of the receipt of the order granting preliminary injunction, the applicant must file a complaint. Otherwise, the preliminary injunction will be vacated. Thereafter, the applicant can pursue the case and seek damages for the infringement or a permanent injunction against the infringing activity.

The cases should normally take six months to trial for domestic entities and another three months for appeal. This time table has not applied for more complex cases involving foreign parties, and as seen in the Starbucks example, it may be years rather than months. One to one and a half years is a more reasonable estimate for suits involving foreign companies.

Criminal Prosecution

Under the laws of the PRC, it is a crime to:

  • Intentionally use another party’s registered trademark;
  • Manufacture any representation of a registered mark without the permission of the registered owner;
  • Intentionally reproduce or distribute copyrighted materials; and
  • Use another’s patent without permission.

Patent infringement matters are rarely the subject of criminal prosecution. Criminal prosecution has been more common in trade secret and trademark matters.

These infringement crimes may result in imprisonment up to three years, and in severe cases for certain violations, up to seven years. Criminal enforcement may be initiated at the request of a private company. The local prosecutors’ office, once advised of the infringing activity, may raid the manufacturing site, confiscate infringing material and press charges against the infringer. Foreign companies must often assist the prosecutor in the collection of evidence toward prosecution of the case. The time frames for prosecution vary, but generally, criminal prosecution may take three months depending upon the availability of evidence, the prosecutor’s docket and interest in preparing the case.


Each process has its attributes. Administrative procedures in China are swift and less expensive. They also serve to improve relations with the government agency and educate the relevant government authorities about products and the need for protection of intellectual property. Civil remedies offer the benefit of both injunctive relief and damages. Finally, criminal prosecution can stop the infringer, who might otherwise covertly move and rename the operations in response to a cease and desist order. Before embarking on any recourse, the foreign company must define its objectives, liaise with appropriate members of the PRC Government and then weigh the options in conjunction with the company’s overall China business plan.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions