While there is still ongoing controversies surrounding IP laws
and their enforcement in China, no one would disagree that there
has been a lot of development in this area. Ultimately, effective
IP enforcement in China is a strategic use of the IP protection
options that are already available while understanding the
commercial and at times, political landscape. The key is to
effectively combine the available options (both from a commercial
and legal standpoint) to achieve the desired commercial result.
Additionally, due to China's size and its rapidly developing
economy and legal system, the difference between theory and
practice may be quite large, especially in more remote areas.
Consequently, often one size does not fit all.
In this article, we provide some guidance on the enforcement
options available when developing a strategy to enforce IPR in
China
1. Administrative Action
This is often the first point of call for clients where they use
China's various administrative agencies to enforce their IP.
Internal rules and regulations can be place-specific and often
there are hidden issues that do not suit every case. Generally, an
IPR owner may file a complaint with relevant local enforcement
authorities, for example:
(i) The State Administration for Industry and Commerce
("SAIC") and its local branches regulate trade mark
infringement and unfair competition acts;
(ii) The National Copyright Administration ("NCA")
and its local offices regulate cases of copyright infringement;
and
(iii) The State Intellectual Property Office ('SIPO") and
its local offices deal with patent infringement.
An administrative agency can take a range of investigative actions,
including entering the infringer's premises; questioningthe
infringer; inspecting and sealing or seizing the infringing goods
and/or confiscating documents which relate to infringing
acts.
If, upon further investigation, an infringement is proven, the
agency can then destroy infringing products, order the
infringements to stop and impose a fine.
Some of the main advantages of administrative proceedings are that
they are relatively inexpensive and quick. Another benefit is that
penalty decisions may later be admissible as evidence in court.
Disadvantages are that administrative action only has a low deterrent effect (fines are generally low) and administrative agencies normally only accept clear-cut infringement cases. Another drawback, particularly in remote places, may be that administrative agencies are reluctant to act because of local ties with the infringer or because the infringer is a large local employer etc. and the system may not be as transparent consistently
2. Civil Litigation
Only the Chinese courts have the power to issue preliminary and
permanent injunctions, and to order infringers to pay damages to
the IP owner.
Historically, foreign IPR owners have been reluctant to use the
Chinese court system to enforce their IPR. However, there are now
an increasing number of excellent and specialised judges,
especially in the Beijing, Shanghai and Guangzhou IP Courts and in
China's larger cities.
Some of the main advantages of court litigation in China are: it
can be quite quick compared to overseas. For example, the most
straightforward cases only require six months to a year, and hence
could be less expensive than litigation in the US or Europe.
Moreover, Chinese courts can award damages and may order
interlocutory asset and evidence preservation orders. If
infringement is found, the courts have the jurisdiction to order
infringers to publicise their apology in the media, which is
effective in deterring other infringers in the market.
Chinese courts are also rapidly improving their levels of
sophistication. There are specialised IP Courts, specialist panels
or tribunals of expert judges to hear IPR cases. For example, the
tribunals recently installed in Wuhan, Nanjing, Chengdu and Suzhou.
"Forum shopping" strategies are important in China, i.e.
choosing where to sue.
However, one of the main drawbacks to civil litigation in China are
its high evidentiary burden and case filing formalities. For
documents from outside of China to be admitted as evidence, they
have to be notarized, legalised, and translated. This process is
cumbersome and time consuming, not to mention, expensive. Moreover,
since China does not have a discovery procedure, evidence gathering
could be challenging. Another important drawback is that damages
are generally not very high. However, this trend may be changing.
There have been several reported IPR cases where significant
damages were awarded, including a recent case where the Beijing IP Court
granted 49 million RMB in damages and a full compensation of
lawyers' fees.
3. Criminal Action
Under the PRC Criminal Law, IPR infringements which reach
certain monetary thresholds constitute criminal offences, and are
investigated by the Public Security Bureaus ("PSB"). In
practice, the PSB most often relies on complaints filed by IPR
owners to take action.
The PSB normally first conducts criminal investigations and if the
evidence obtained warrants an indictment of the infringer, the case
can be transferred to the Procuratorate, which then decides on
prosecution before a People's Court.
While criminal actions have a very strong deterrent effect on
infringers, an IPR owner may find it hard to convince thelocal PSB
to accept a case and start up investigations, since the PSB handles
all kinds of crimes and may not see IP enforcement as a
priority.
4. Customs Action
As one of the cheapest ways of IP enforcement in China, customs
actions are a popular means to provide basic protection for IPR in
China. While most countries only have entry customs screenings,
China has both entry and exit customs screenings. In fact, most seizures of counterfeits are done on
goods leaving the country. Since the vast majority of seizures are
done on the basis of a pre-recorded right, recordal of IPR with
Customs is essential. The procedure is inexpensive and easy.
Once a seizure is made, customs actions bring several benefits for
an IPR owner: the seized products may prove useful as evidence in a
civil litigation in China against the shipper or the manufacturer
of the counterfeits; and the seizure also provides the IPR owner
with useful evidence about the overseas buyers of the Chinese
infringer.
Customs procedures are fairly simple, yet strict: when customs
finds any suspicious goods, customs can detain them and notify the
IPR owner. The IPR owner then has a very short term of three
working days to pay a bond and request seizure of the goods. If the
IPR holder does not consider the goods to be infringing,or if the
bond is not paid on time, customs willrelease the goods.
5. Conclusion
Despite the challenges that are present, IP owners that devise a clear China IP strategy which leverages and combines the available enforcement methods are often successful in protecting their IPR in China. Moving forward, the change and evolution of the relevant laws and court practices in China are likely to continue to make it easier for foreign and domestic companies to enforce their IPR in China.
Originally published in Corporate Live Wire
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.