In October 2018 at the 124th Canton Fair, one of our Turkish clients found that a Chinese company counterfeited their coffee maker, which was very popular in Turkey and the Middle Eastern markets. What made things worse was the Chinese company also specifically targeted the Middle Eastern markets.
With the help of China’s strong manufacturing capability and e-commerce platforms, the infringer even trumped the real product owner in product design, manufacture and sales. When the Turkish company wished to take action against the infringer, they did not have a design patent in China.
Since the design had already been disclosed in Europe, the novelty of the design had been lost and, therefore, it would not be possible to obtain a design patent in China. In addition, they had not launched this product in China before the Chinese competitor did. All these factors made it difficult to contain the “infringement”, from either the perspective of patent law or unfair competition law. With this example in mind, the author intends to inform foreign companies about what lessons can be learned from this, and how important it is to register design patents in China.
Don’t delay any further
In Europe, you can seek protection for an original work either as a registered or unregistered design, while in China unregistered designs do not enjoy protection unless in the rare circumstances where the work can be protected via copyright.
Therefore, companies doing business in mainland China, from manufacturing to sales, should consider registering design patents in China. In general, design patent protection should be considered when a product with new and distinctive aesthetic features is in development. Registering your design patent first is the best way to avoid your design patent from being hijacked.
If you do not register a design, someone else may register it. Then you will either have to challenge that patent by filing invalidation, which is money and time-consuming, or give up the Chinese market.
Patentable designs in China
According to China’s Patent law, a design is defined as “the shape, pattern, or the combination thereof, or the combination of the colour with shape and pattern, which are rich in an aesthetic appeal and are fit for industrial application”.
Most items with a distinctive exterior appearance can be registered as a design patent. There are also exceptions. Two-dimensional trademarks, parts of a design that cannot be used or sold separately, and items that contravene Chinese law, or have a negative effect on public interest, are not allowed. Although products with two-dimensional design features are not excluded absolutely from design patent protection, if they are mainly used for identification of products, it is advisable to protect them by trademark or copyright.
Note that the China design patent requires absolute novelty. The design must be new and have not been disclosed to the public through sales, advertising or any other means anywhere around the world before the application is filed in China. Otherwise, the validity of the patent can be challenged by invalidation later. That said, you may claim Paris Convention priority if you have already filed a design patent application in a member country within six months before you file it in China. Protection for design in China starts after the registration is completed, lasting for a maximum of 10 years from the filing date, and is not renewable.
Examination and protection
China does not conduct substantive examinations for prior art. A design patent applicant only needs to submit an application that satisfies the formality requirements to the China National Intellectual Property Administration (CNIPA). In most cases, the registration process may take six months. Substantive examination occurs only when a third party challenges the validity of a patent after registration.
Even if in some instances you do not think the designs have much substantial patent value, it is still advisable to register them. A design patent registration will remain valid unless a third party successfully invalidates it. A successful registration will grant you the exclusive right to protect the aesthetic features of a product, sue others for infringing it, and record it with customs to block infringing products across the borders.
The IP protection environment is improving in China, and litigations against design patent infringements are common. Good litigation results can be expected and obtained by the holders of design patent rights.
Maggie Yang is a partner at Corner Stone & Partners and a member of the INTA brands and innovation committee.
Corner Stone & Partners
1905, Tower B, Tian Yuan Gang Centre,
No. 2 Dongsanhuan North Road, Chaoyang District,
Beijing 100027, China
Tel: +86 10 8446 4600 Ext.802
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