CHINA Law and Practice Contributed by: Chuanhong Long, Huiqing Wang, Yingying Shen and Fan Li, CCPIT Patent and Trademark Law Office
Registered Trade Mark Registered trade mark rights offer the distinct advan- tage of ease of proof and the potential for indefinite renewal. Consequently, provided that a sign or logo affixed to a product meets the criteria for registration, seeking protection via trade mark rights is generally the preferred strategy. Patent (Invention and Utility Model) Generally, patent protection is prioritised over trade secret protection when maintaining confidentiality is impractical. For example, the product structure that can be readily ascertained through disassembly or reverse engineering once the product is publicly launched; pharmaceutical compositions that must be disclosed during regulatory review or in drug label- ling; product and process are that are possible to be achieved through independent innovation by others. Industrial Design For products that are particularly susceptible to imi- tation – especially those sold at scale through online channels – right-holders often need to present formal proof of rights in order to move forward with enforce- ment actions, such as requesting that an e-commerce platform take down infringing listings. A design patent certificate provides considerable convenience in this regard. Another advantage of industrial design is partial design. If a right-holder anticipates that a particular portion of a design is likely to be copied, they may file a design patent application as partial design, thereby securing targeted protection for the core elements of the design. Trade Dress Trade dress protection offers a distinct advantage for packaging and decoration that have acquired signifi- cant distinctiveness through long-term use, particu- larly where the statutory term of a design patent (ie, 15 years in China) has expired. 8.2 Cumulative and Overlapping Protection Under China’s intellectual property regime, it is pos- sible for the same subject matter to be eligible for protection under multiple forms of IP rights simultane- ously. For example, a single product appearance may
ary liability or comparable liability, but this usually depends on their degree of control, whether they ful- filled their duty of care, and the connection between their conduct and the alleged harm. Chinese courts have not adopted a blanket strict-liability approach. 8. Intersections and Overlaps 8.1 Choice of Protection and Strategic Considerations Under Chinese legal practice, IP right-holders may sometimes face a choice among different avenues for IP protection. While there is no fixed ranking between these options, right-holders may, depending on the specific circumstances, flexibly select the most suit- able form of protection. Various factors influence this choice, but they gen- erally fall into three categories: the boundary of the rights, the nature of the infringing acts, and the avail- ability of defences. Below are illustrative scenarios where a specific form of IP protection may be prioritised. Please note that these examples are not exhaustive, and the optimal strategy should always be determined on a case-by- case basis. Copyright For products with a limited life cycle – eg, fast fashion apparel – copyright may be preferred. In such cases, the product’s packaging and decoration may not yet have acquired sufficient influence to gain protection. If a design patent application were pursued, the exami- nation period would be comparatively long over the product’s life cycle. Therefore, copyright, which arises upon creation/design and does not require registra- tion, holds a comparative advantage. Furthermore, copyright can sometimes serve as an effective supplementary form of protection where a sign or logo is difficult to register as a trade mark. For instance, if a product’s packaging does not qualify for registration as a three-dimensional trade mark, the right-holder may consider protecting the packaging’s appearance as a work under copyright law.
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