China Intellectual Property Protections
If you are doing business in or with China (and this includes having your products made in China), you need to safeguard your intellectual property (IP) rights there.
Intellectual property encompasses intangible creations such as trademarks, copyrights, patents, and trade secrets.
- Trademarks: These are recognizable symbols, phrases, or logos that identify the source of your goods or services. In China, trademark infringement occurs when another company uses a registered trademark on similar goods or services.
- Copyrights: Copyrights protect original creative works like literary works, musical compositions, and artistic designs. Copyright infringement happens in China when someone copies your protected work without your permission.
- Patents: Patents grant exclusive rights to inventions for a limited period. Patent infringement occurs in China when someone makes, uses, sells, or offers to sell a product or process that infringes on your patented invention.
- Trade Secrets: Trade secrets are confidential business information that provides a competitive advantage. Trade secret misappropriation occurs in China when someone acquires your trade secret through improper means and uses it to their advantage.
Acting Against Chinese IP Infringers
If you discover your intellectual property rights are being infringed upon in China, it nearly always makes sense for you to do something to try to protect your interests. This blog post discusses the initial steps of sending a cease-and-desist letter and potentially obtaining a court order to preserve evidence. However, it is important to recognize that these approaches may not always be sufficient.
Cease-and-desist letters can be a powerful tool, particularly against reputable companies that value their brand reputation. But they are usually far less effective against less established companies or those with a history of disregarding intellectual property laws.
To ensure you’re pursuing the most effective course of action, consulting with an experienced IP attorney who focuses on China is crucial. They can assess your specific situation, evaluate the strength of your IP rights, and guide you through the appropriate enforcement strategies, which may include litigation, administrative actions, or alternative dispute resolution methods.
IP Infringement in China: Our Law Firm’s Approach
Companies often contact my law firm’s international IP attorneys for help in stopping Chinese companies from infringing on their intellectual property—be it a trademark, a copyright, a patent, or even a trade secret. We have penned numerous cease and desist letters to Chinese companies, and surprisingly, they often work quite well.
Cease-and-Desist Letters to Chinese Companies are a Cost-Effective First Step
If you are faced with someone in China using your IP, you can pursue either administrative remedies or court remedies, but both of these paths require spending quite a bit of money on lawyers and take time for any results. A cease-and-desist letter (sometimes called a “lawyer’s letter”) will almost certainly be faster and cheaper.
Crafting Effective Cease-and-Desist Letters for China
Cease-and-desist letters tend to work well if sent to a legitimate company. The legitimate company usually does not want to risk its reputation or money on a losing claim, but the fly-by-night company typically does not care. It is essential these letters be written in Chinese and refer specifically to the legal and factual basis of the IP claims.
It does not make sense to send such a letter to a fly-by-night company that is almost certainly just going to ignore it and it also does not make sense to send such a letter if it is important that you catch the offending company unawares with your lawsuit.
China Evidence Preservation Orders
The effectiveness of a cease-and-desist letter hinges on its ability to convey the seriousness of the infringement and the legal consequences that will follow from continuing to infringe. A well-crafted letter typically outlines the specific IP rights violated, presents a clear demand to cease the infringing activities, and implies potential legal actions. For instance, when we discovered a major retailer in China using a client’s patented product design, our cease-and-desist letter detailed the patent infringements and outlined the legal repercussions, leading to an immediate halt in their use.
Such letters are particularly potent when directed at legitimate companies that value their reputation and business continuity. However, they are less effective against ‘fly-by-night’ operations that have little regard for legal repercussions. In such cases, an evidence preservation order becomes crucial. This court-issued order compels the infringing party to preserve all evidence relevant to the alleged infringement. Securing this order ensures that crucial evidence is not destroyed or tampered with, especially in situations where a swift legal action is necessary. It provides a strategic advantage in legal proceedings, ensuring that the offending company cannot erase or hide evidence of their unlawful activities.
Strategic Considerations in China IP Enforcement
You typically want your document preservation order to hit the offending company completely unawares so that its time to destroy evidence is minimized. It is also a good idea to conduct basic due diligence on the potential letter recipient before sending the letter.
