How should foreign nationals address the problem of intellectual property infringement within China?

Intellectual property (IP) infringement is a common issue for foreign companies and individuals exporting to China. This may include counterfeiting, patent violation, copyright piracy, or trademark misuse. There are some international agreements and organisations that China is involved can be used for protecting your right - e.g. TRIPS, Hague agreement, Paris convention, RCEP. While China is substantially working to strengthen its IP legal framework and enforcement mechanisms, IP infringement still challenges the right that firms must protect. Here is a systematic and informed approach to protect your valuable assets.

Step 1: Preserve Evidence

Please gather concrete proof immediately. Under TRIPS Article 43, Chinese courts can compel infringers to disclose evidence if rights holders demonstrate a prima facie case. Proofs may include:

• Photographs and videos of infringing goods, labels, sales environment, etc.

• Purchase receipts and samples of the infringing products.

• Screenshots of e-commerce platforms including URLs, store names, transaction records, etc.

• Brochures, advertisements, or any promotional materials featuring the infringing use.

• Documents that link the infringement to specific entities or individuals (e.g. business licenses).

Step 2: Verify and Secure Your IP Rights in China

• Ensure your IP rights are officially registered and valid in China. Please be ware that rights registered elsewhere (e.g. USPTO) offers no automatic protection within China.

• Locate your Chinese trademark registration certificates, patent grant notices, or copyright registration documents.

Step 3: Conduct preliminary Investigation and Analysis

• Determine the scale of infringement, the channels involved, and the primary infringers.

• Evaluate the potential financial and reputational damage caused by the infringement.

Step 4: Issue a Cease-and-Desist Letter (C&D) with Chinese lawyers

• Formally notify the alleged infringers of your rights, demand them to stop infringing activities immediately and potentially seek compensation / destruction of goods. Please handle with care and professional help.

Step 5: Explore Formal Enforcement Avenues

• Administrative enforcement: It works best for rapid seizures with low cost. It's key agencies are AMR (trademarks) and NCAC (copyright). This rely on TRIPS compliant border measures.

• Civil litigation: It is ideal for injunctions and its key agency is Intellectual Property Court. This solution relies on Hague Convention, which has enforceability in over 90 countries.

• Criminal action: It is suits large scale counterfeting and its key agency is Public Security Bureau. It is based on WTO TRIPS Art.61, which criminalises wilful infringement.

Step 6: Implement Long-Term Protection strategies

• Make sure all key trademarks, patents, and designs are proactively registered in China before market entry or product launch.

• Establish ongoing surveillance for potential infringements.

• Implement strong IP clauses in agreements with Chinese partners.

Acting against IP infringement is a sophisticated process and professional help is necessary. Please contact us if there’s any question about IP infringement or any legal issues regarding foreigners in China, or related legal provisions regarding foreigners working in China.

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