IPR in Germany, Europe share the same principles as China

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China and Germany share the same basic principles of intellectual property rights (IPR) protection. The scope of IPR protection is also generally the same. However, in order to protect IPR efficiently it is strongly recommended to know the essential similarities, and the differences, of both systems in detail.

CMS_Germany-Jan_Dombrowski

Patents

In China and Germany, technical inventions can be protected as patents or utility models. Both kinds of patents exclude other parties from using the technical invention.

There is no fundamental difference between a patent or a utility model application in China, compared to Germany. In Germany and in China, the absolute novelty standard applies with respect to the definition of prior art. In order to obtain patent protection, the subject matter of an invention must be new and inventive over the prior art.

China’s State Intellectual Property Office (SIPO) and Germany’s Patent and Trade Mark Office (DPMA) require an examination regarding the formalities and other requirements, in particular novelty or inventiveness, before granting a patent. However, for a registration of a utility model, the SIPO and DPMA only conduct a formal examination of the basic filing requirements.

According to German and Chinese law, patent protection can be granted for 20 years, and utility model protection for 10 years.

Additionally, making use of the Patent Co-operation Treaty (PCT) system, patentees can extend through the national patent office their patent protection to other territories. Furthermore, patent protection can be extended to all 27 member states of the European Patent Convention by filing one application with the European Patent Office (EPO).

Design patents

In China, designs are protected as design patents under Patent Law. Designs are only protected after formal registration with the SIPO. In Germany, designs can be protected under the German Design Act after registration with the DPMA. However, designs can also be protected for the European Community under the European Community Design Directive. According to this directive, protection of designs can be achieved by filing an application for registration with the Office of Harmonisation for the Internal Market (OHIM) – a so-called Registered Community Design (RCD) – or by first disclosing the design to the public – a so-called Unregistered Community Design (UCD).

The requirements for design protection, in particular novelty and individual character, are basically the same under China’s Patent Law, Germany’s Design Law and the Community Design Directive. Concerning the novelty, it is important that UCD protection is granted only if the design was first made available to the public within the territory of the European Community. If the design has already been made public before outside the European Community, the design no longer fulfils the requirement of novelty.

For registration of a design, the SIPO, DPMA and OHIM conduct only a formal examination of the basic filing requirements; the SIPO, DPMA and OHIM do not undertake any search for identical or similar designs with respect to novelty and individual character.

In China, a registered design patent is protected for a maximum of 10 years from filing the application. In Germany, a registered design can be protected for five years and this protec-tion can be renewed up to 25 years.

In the case of RCD the same periods of validity apply: renewal every five years up to 25 years from the filing date. In this context it is important that UCD provides for a period of three years of protection from the date on which the design was first made available to the public within the territory of the European Community.

Trademarks

Basically trademark protection in Germany, Europe and China follows the concept to identify the origin of goods and services of a company in order to differentiate its goods and services from those of its competitors.

Trademark protection provides an exclusive right to use the trademark and to prevent third parties from using the same or similar trademarks for identical or similar goods and/or services as those protected by the trademark. The scope of trademark protection derives from the registration of protection for particular goods and services.

The DPMA and OHIM recognise not only word and/or figurative trademarks but also sound, haptic, colour or three-dimensional marks as well.

Registration of a trademark with the DPMA requires formal examination of the basic filing requirements and a substantial examination limited to absolute grounds of refusal, such as distinctive character. However, registration of a trademark with China’s Trademark Office requires a formal and a substantial examination, but including relative grounds for refusal, e.g. prior identical or similar trademarks.

In China and in Germany, trademark protection is granted for 10 years. The duration is indefinitely renewable.

It is notable that in China an application for revocation of a trademark can be filed after three years of non-use of a trademark, whereas in Germany the post-registration grace period of non-use is five years. The obligation to use the trademark is linked to the registered classes of goods and/or services and must be exercised within the territory of protection.

Furthermore, China and Germany have ratified the Madrid Protocol; consequently Chinese and German trademark owners may extend the protection of their nationally registered trademarks through this international registration system worldwide.

Finally, it is recommended for Chinese and German trademark holders to register a Community Trademark (CTM) with the OHIM, in accordance with the provisions of the CTM Regulations, in order to obtain trademark protection in the whole European Union.

The CTM system provides for one single registration protection for all 27 EU countries. The duration of protection is 10 years and can be renewed indefinitely.

Jan Dombrowski is a counsel at CMS Hasche Sigle in Stuttgart. He can be contacted on +49 711 9764 208 or by email at jan.dombrowski@cms-hs.com