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A list of the major players in administration enforcement actions follows. Again, this list is not exhaustive, as other agencies, such as State Drug Administration (for fake pharmaceutical products) or the Ministry of Culture (for copyrighted materials and their markets) may also play a role in the enforcement process. Note that in most cases, administrative agencies cannot award compensation to a rights holder. They can, however, fine the infringer, seize goods or equipment used in manufacturing infringing products, and/or obtain information about the source of goods being distributed.
State Administration on Industry and Commerce (SAIC), Trademark Office The Trademark Office, under the SAIC maintains authority over trademark registration, administrative recognition of well-known marks, and enforcement of trademark protection. The SAIC’s Fair Trade Bureau handles disputes arising under the Anti-Unfair Competition Law, including trade secret matters. In enforcement efforts, SAIC has the power to investigate the case. When an infringement is determined, SAIC has the power to order that the sale of infringing items cease and to stop further infringement, order the destruction of infringing marks or products, impose fines, and remove machines used to produce counterfeit goods.
In 1998, China established the State Intellectual Property Office (SIPO), with the vision that it would coordinate China’s IP enforcement efforts by merging the patent, trademark and copyright offices under one authority. However, this has yet to occur. Today, SIPO is responsible for granting patents (national office), registering semiconductor layout designs (national office), and enforcing patents (local SIPO offices), as well as coordinating domestic foreign-related IPR issues involving copyrights, trademarks and patents.
Addressing infringement of IP in China follows a two-track system. The first and most prevalent is the administrative track, whereby an IP rights holder files a complaint at the local administrative office. The second is the judicial track, whereby complaints are filed through the court system. (China has established specialized IP panels in its civil court system throughout the country.) Determining which IP agency has jurisdiction over an act of infringement can be confusing. Jurisdiction of IP protection is diffused throughout a number of government agencies and offices, with each typically responsible for the protection afforded by one statute or one specific area of IP-related law. There may be geographical limits or conflicts posed by one administrative agency taking a case involving piracy or counterfeiting that also occurs in another region. In recognition of these difficulties, some regional IP officials have discussed plans for creating cross-jurisdictional enforcement procedures. China’s courts also have rules regarding jurisdiction over infringing or counterfeit activities, and the scope of potential orders.
Though China is a party to international agreements to protect intellectual property (including the WIPO, Berne and Paris Conventions, among others), a company must register its patents and trademarks with the appropriate Chinese agencies and authorities for those rights to be enforceable in China. Copyrights do not need to be registered but registration may be helpful in enforcement actions. A brief summary of China’s patent, trademark, and copyright laws follows below. For more in depth coverage, please see the relevant section of this Toolkit.
Patent: China’s first Patent Law was enacted in 1984 and has been amended twice (1992 and 2000) to extend the scope of protection. To comply with TRIPS, the latest amendment extended the duration of patent protection to 20 years from the date of filing a patent application. Chemical and pharmaceutical products, as well as food, beverages, and flavorings, are all now patentable. China follows a first-to-file system for patents, which means patents are granted to those that file first even if the filers are not the original inventors. This system is unlike the United States, which recognizes the “first to invent” rule, but is consistent with the practice in other parts of the world, including the European Union. As a signatory to the Patent Cooperation Treaty in 1994, China will perform international patent searches and preliminary examinations of patent applications. Under China’s Patent Law, a foreign patent application filed by a person or firm without a business office in China must be made through an authorized patent agent, while initial preparation may be done by anyone. Patents are filed with China’s State Intellectual Property Office (SIPO) in Beijing, while SIPO offices at the provincial and municipal level are responsible for administrative enforcement.
Trademark: China’s Trademark Law was first adopted in 1982 and subsequently revised in 1993 and 2001. The current Trademark Law went into effect in October 2001, with implementing regulations taking effect on September 15, 2002. The new Trademark Law extended registration to collective marks, certification marks and three-dimensional symbols, as required by TRIPS. China joined the Madrid Protocol in 1989, which requires reciprocal trademark registration for member countries, which now include the United States. China has a ‘first-to-file’ system that requires no evidence of prior use or ownership, leaving registration of popular foreign marks open to third parties. However, the China Trademark Office has cancelled Chinese trademarks that were unfairly registered by local Chinese agents or customers of foreign companies. Foreign companies seeking to distribute their products in China are advised to register their marks and/or logos with the China Trademark Office. Further, foreign companies should register appropriate Internet domain names and Chinese language versions of their trademarks. As with patent registration, foreign parties must use the services of approved Chinese agents when submitting the trademark application. However, foreign attorneys or the Chinese agents may prepare the application. Recent amendments to the Implementing Regulations of the Trademark Law allow local branches or subsidiaries of foreign companies to register trademarks directly without use of a Chinese agent.
Copyright: China’s Copyright Law was established in 1990 and amended in October 2001. The new implementing rules came into force on September 15, 2002. Unlike patent and trademark protection, copyrighted works do not require registration for protection. China grants protection to persons from countries belonging to copyright international conventions or bilateral agreements of which China is a member. However, copyright owners may wish to register voluntarily with China’s National Copyright Administration (NCA) to establish evidence of ownership, should enforcement actions become necessary.
Unfair Competition: China’s Anti-unfair Competition Law provides some protection for unregistered trademarks, packaging, trade dress and trade secrets. The Fair Trade Bureau under the State Administration for Industry and Commerce (SAIC) is responsible for the interpretation and implementation of the Anti-unfair Competition Law. SAIC also provides protection of company names. According to the TRIPS Agreement, China is required to protect undisclosed information submitted to Chinese agencies in obtaining regulatory approval for pharmaceutical and chemical entities from disclosure or unfair commercial use. China’s State Drug Administration and Ministry of Agriculture oversee the marketing approval of pharmaceuticals and agricultural chemicals, respectively.
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