Before going to China get your Tackle in Order here first

Photo Adrian Pingstone
Reproduction kindly licensed by the author
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Jane Lambert

The IPO has published details of the China IP Roadshow 2017 when our IP attaché, Tom Duke, will tour Scotland and the North of England between 18 and 20 Sept. My chambers are assisting with the Yorkshire leg of his tour and I can tell you that there have been a lot of enquiries and we are already into double figures with the bookings. If you want to attend the Leeds event call my clerk Steve on 020 7404 5252 or send him an email without delay.

Most British businesses do very well in China but things can go wrong sometimes. When they do, they can have repercussions here. That is where I come in.  Here are some of the problems that occasionally arise:
  • The British trade mark of a company that applies to register that mark in China is opposed, invalidated or revoked;
  • A company that imports goods from China for distribution in the UK finds that its supplier has no or insufficient legal protection for those goods here;
  • A British distributor that imports goods made to its order in China finds that its Chinese manufacturer is supplying identical goods to its competitors here,
  • A joint venture between British and Chinese partners turn sour because of disputes over who owns the intellectual property in any work carried out in China. 
You can apply for registration of your mark in China under the Madrid Protocol but, if you do, remember that art 6 (3) provides:
"The protection resulting from the international registration, whether or not it has been the subject of a transfer, may no longer be invoked if, before the expiry of five years from the date of the international registration, the basic application or the registration resulting therefrom, or the basic registration, as the case may be, has been withdrawn, has lapsed, has been renounced or has been the subject of a final decision of rejection, revocation, cancellation or invalidation, in respect of all or some of the goods and services listed in the international registration."

If your British application fails or your registration is revoked or invalidated then so too will your application or registration under the Protocol including any application or registration you may have in China.

Before you take a licence make sure that your supplier has a patent, design registration, or trade mark that corresponds to its Chinese registration here and in every other market that you wish to supply. Also, make sure that there is a clause in any licence agreement that you take requiring your licensor to enforce its intellectual property rights here.

There should be a clause in your agreement with your manufacturer specifically prohibiting is supplying goods made to the same design or sometimes even the same tool to anyone other than you but you can protect yourself in this country and China by applying for patents and/or registering designs and trade marks in both countries.

Finally, your joint venture agreement should make clear which party is entitled to apply for patents or other intellectual property rights in any inventions or innovations that may result from your collaboration including improvements.

Some of your agreements will be in Mandarin and governed by Chinese law. Others will be in English and governed by English law or possibly the laws of the Hong Kong Special Administrative Region which are still based largely on our law, I can advise you, draft your contracts and other instruments and represent you in any transactions based on English law but I will gladly refer you to British law firms and patent or trade mark attorneys operating in China, Chinese lawyers and attorneys practising here or colleagues from China whom I have met over the years at conferences and other events.

I shall be talking briefly about steps you need to take here before you board that flight to Shanghai or Guangzhou after Tom has delivered his presentation at Leeds and Barnsley. In the meantime, should you wish to discuss this post, Tom's visit or intellectual property strategy or licensing generally, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

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