IP Australia will lodge its first permanent offshore representative in Beijing as Australia’s innovation economy engages more closely with China as Chinese enforcement of intellectual property rights matures.
IP Australia’s David Bennett will be on hand at the Australian embassy in Beijing as IP Counsellor from early 2017 to help local companies on the ins and outs of the Chinese patent, trademark and copyright scene.
“Other countries like the US and the UK have had people there for a number of years and we are following their example,” said Mr Bennett, who was speaking at the InnovationAus.com Intellectual Property – Your Business Here and Abroad forum on Tuesday.
Mr Bennett will engage with China’s IP-related agencies to discover what is happening in China’s rapidly evolving intellectual property culture and help figure out which approaches for Australian businesses are working, and which are not.
China differs greatly from Australia in some areas of IP law. In China the first to register a trademark owns that trademark under law, as tech giant Apple found out to its regret when Chinese firm Proview beat Apple to locking down the term iPad.
When Apple went to market iPads in China it had to pay out $60 million to settle a trademark dispute with Proview and use the iPad name.
While conventional wisdom says IP is hard to control in China, Mr Bennett said that much had changed in its intellectual property enforcement culture in the last decade. The Chinese Government recognised that as its economy becomes more innovation focussed, there is a corresponding need for stronger IP systems.
“What you are seeing now is a lot of Chinese companies taking action against other Chinese companies. There is a strong desire to strengthen the systems, and you are seeing more effective measures.”
“It still depends very much on what local interest are. If you are trying to take down a factory that is employing half the local economy and you are trying to engage a local government agency to do it through administrative measures you might not get much cooperation.
“It may be more appropriate to go for a civil action – it can all depend on which area you are working in and what are the industries are,” said Mr Bennett.
“Yes there are problems, but you can enforce and protect your IP in China,” he said.
It is important to be proactive in registering IP in China, especially to avoid problems with the first mover trademark rule and to make sure trademarks are registered in Chinese and English.
“The Chinese market doesn’t like Roman script, or English language names and the market will rename it if you don’t,” said Mr Bennett.
He showed a number of amusing work-arounds including a clone of the Ralph Lauren brand which featured the distinctive polo rider logo, but was called ‘Three Legged Horse’ brand.
IP rights are territorial, so even though IP may be registered in Australia, that has no effect in China.
“This means that if you have no IP registered in China, it is perfectly legal for someone to make a knock-off of your product,” Mr Bennett said.
“The first step you must take is registering your IP rights in China, particularly before you disclose information to others, such as potential business partners and manufacturers, and before you take your goods to an international trade show,” he said.
“Even if you are outsourcing manufacturing to China and not selling your goods there, you still need to register your IP there.”
There are differing levels of patent protection, with the Chinese allowing what are known as utility and design patents, which are cheaper and less arduous to put in place. These types of patent are not examined on lodgement, only if there is a dispute.