By Marine Vanhoucke, associated, and Patricia Bodalo, collaborator
Paris Fashion Week started on September 25. This is an opportunity to remind creators the importance of adopting a comprehensive intellectual property strategy, especially when exporting their creations to countries where counterfeiting is widespread.
According to a recent report from the European Commission on the protection of intellectual property rights in third countries, China is the country of origin of 70% of counterfeit goods seized in the European Union and 76% of counterfeit goods come from e-commerce.
It is therefore essential to protect your intellectual property rights and to promote them in China via the filing of a national trademark, registration of designs and models or the preventive constitution of proof of creations.
Trademark registration in China: protection against bad faith registrations and counterfeiting
Registering a trademark makes it possible to monopolize the use of this sign (name, logo, etc.) in a given territory to designate the products or services covered by this brand. As consumers associate the brand with the original identity of a product, it is essential and strategic to protect it in order to guard against misuse.
Although a trademark registration at the European Union level is common, it proves insufficient when exporting products outside the Union, for example to China, a particularly attractive market where difficulties can then arise:
Trademark squatting
Chinese trademark law, like French law, is based on priority over time: the first applicant becomes the owner of the trademark in the designated territory.
It is unfortunately common for a European trademark holder wishing to extend its protection abroad to discover that an identical trademark has already been registered by a third party.
This practice of “trademark squatting” is very widespread, particularly in China where the European market is closely monitored in order to register in advance brands that are developing on the European market. The goal of the “squatters” is to sell counterfeits, take advantage of the brand's reputation to sell unaffiliated products or force the original owner to buy the brand from them.
This practice is theoretically prohibited because it is a deposit in bad faith. However, the procedure for recovering the rights to the said trademark is long, complicated and expensive in the absence of prior local registration.
Although the Chinese National Intellectual Property Administration (CNIPA) has been trying for several years to refine the examination of trademark registrations in order to identify those in bad faith, it remains strongly recommended to anticipate this problem by filing a trademark in China at an early stage.
Trademark infringement
Counterfeiting consists of the reproduction, imitation, total or partial use of an intellectual property right without the authorization of its owner. As mentioned above, it is unfortunately common in China.
Registering a trademark in this country allows the owner to protect against the sale of products using an identical or similar trademark to designate identical or similar products. It could be :
- either copies of original creations, in this case there will be trademark and potentially design or copyright infringement;
- or the reproduction of the mark on products distinct from those marketed by the owner of the mark.
It is much simpler and more effective to fight counterfeiting, particularly of products exported from China, if the brand is registered locally. Indeed, in addition to amicable or legal actions against the counterfeiter, it is possible to register your brand with Chinese customs who can then seize the products in order to avoid their marketing.
Please note, if the creator plans to distribute his products in Hong Kong, a separate deposit will be necessary.
Designs and models in China: additional protection
Protection through design registration in China is potentially open to each fashion design.
Although it is too time-consuming and expensive for creators to register all designs and models, given the rapid renewal of collections, this protection must be considered, at least for certain pieces. The creator may in fact limit himself to the protection of iconic designs and models or those best received by the public, and be satisfied with the protection offered by copyright (without registration) for the rest, particularly in the e- trade.
Copyright: the creation of proof of creation
As in France, copyright protection in China is not subject to registration and exists from the original creation. Any new fashion creation therefore benefits from this protection automatically, assuming that it is indeed original.
However, in the event of counterfeiting, it is always difficult to prove ownership of rights and anticipation. The creator must in fact be able to demonstrate the date on which he created his creation in order to prove that it took place before his opponent.
In order to facilitate this proof, Chinese Copyright Protection Center (Copyright Protection Center of China - CPCC) offers the possibility of voluntary registration of creations, including sales catalogs. The author will then benefit from a copyright certificate making it possible to give a certain date to his creations and to fight effectively and quickly against counterfeits, particularly on e-commerce sites.
In conclusion, it is strongly recommended that creators seek support from specialists in order to establish an intellectual property strategy taking into account international development options at an early stage of the activity.
Marine Vanhoucke
Partner
Marine Vanhoucke advises companies on Intellectual property and accompanies them on their subjects of Compliance.
Head of Hong Kong office, she assists French companies in their establishment and growth in Asia and has built up expertise in legal issues of international law, notably combining French and Asian interests.
