CHINA Law and Practice Contributed by: Chuanhong Long, Huiqing Wang, Yingying Shen and Fan Li, CCPIT Patent and Trademark Law Office
qualify for protection as both a design patent and a copyrighted work. Chinese law contains no express provision addressing whether such cumulative pro- tection of intellectual property rights is permitted. In judicial practice, Chinese courts have adopted vary- ing approaches depending on the specific facts and circumstances of each case. When Multiple IP Rights Inhere in the Same Carrier and Are Inseparable When multiple forms of intellectual property rights subsist in a single carrier – for example, a given graph- ic design that serves simultaneously as a registered trade mark and as a copyrightable work – it is appar- ent that the various IP rights cannot be separated from the carrier (the design) itself. In such circumstances, Chinese courts generally regard the situation as one involving concurrent claims and will require the rights-holder to elect a single form of IP right upon which to base the action. The under- lying rationale is that recognising cumulative protec- tion of multiple IP rights in this context could result in double recovery for the rights-holder and, corre- spondingly, double liability for the infringer, which are inconsistent with the fundamental principles of Chi- nese civil law. When Multiple IP Carriers Exist and the Respective Rights Are Separable When there are multiple carriers of intellectual proper- ty rights and the rights are separable from one anoth- er, Chinese courts generally permit rights-holders to claim separate protections under multiple forms of IP. For example, a single product may embody both trade mark rights and patent rights. Although both rights reside within the same product, they attach to distinct carriers – the trade mark is borne by a graphic design on the product’s surface, whereas the patent relates to a particular technical feature within the product itself – and are therefore capable of being separated. Should the product be counterfeited in its entirety, the IP rights-holder would be fully entitled to assert claims for both patent infringement and trade mark infringe- ment before the court in a single action. It should be noted, however, that while the rights- holder may in such circumstances assert claims
under both forms of IP protection simultaneously, this does not mean the court will award double the damages that would be recoverable under a single IP right. Rather, the court will determine the amount of damages based on factors such as the actual losses suffered by the rights-holder or the profits gained by the infringer through the unlawful act, as well as the contributory value of each of the IP rights claimed, so as to ensure that the IP holder is made whole without thereby reaping a windfall. 8.3 Patents and Trade Secrets Confidential know-how and technical information can be protected as a trade secret before filing the same as a patent, since filing a patent does not disclose such information. However, the publication of a pat- ent application fundamentally destroys trade secret protection for anything disclosed within the docu- ment. Once a patent expires or is invalidated, the dis- closed technology enters the public domain. It cannot “revert” to being a trade secret because the require- ment of secrecy was permanently destroyed upon its initial publication. 8.4 Trade Marks, Trade Dress and Industrial Designs For a comparison between trade dress and industrial design, please refer to 4 Industrial Designs and Trade Dress . Under China’s Trademark Law, any sign that can dis- tinguish the goods of a natural person, legal entity, or other organisation from those of others may be applied for registration as a trade mark. Such signs include words, designs, letters, numerals, three- dimensional symbols, combinations of colours, and sounds, as well as any combination of these elements. To be registered, a trade mark must be distinctive and be capable of identifying the source of the goods. While trade marks typically constitute registered rights and trade dress often relies on unregistered protec- tion, both serve the identical fundamental function of identifying the commercial source of goods. Product shapes or packaging can be protected simul- taneously as trade marks and industrial designs. China’s Trademark Law permits the registration of
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