INTA Meeting Focuses On China IP Piracy

by Mary Swire, for LawAndTax-News.com, Hong Kong

26 May 2005

During the International Trademark Association's annual meeting in San Diego from May 14th to 18th, delegates heard advice about how to fight trademark piracy in China.

Opening the meeting, president Anne Gundelfinger detailed some of the initiatives the Association has been working on since she became president on January 1, notably robust advocacy on anti-counterfeiting, and revision of the US Federal Trademark Dilution Act, which has now passed through the House of Representatives with broad support.

Gert-Jürgen Frisch of Invist told a panel on luxury goods: "The reason for counterfeits is that we buy them. We can't really blame sellers in China and Thailand. It's our fault for setting up a market for this."

But Loke-Khoon Tan from Baker & McKenzie in Hong Kong said: "This is a war!" and urged brand owners to be partners in the fight against counterfeiting in China, rather than being armchair critics, listing do's and don'ts for protecting brands, including registering a mark, getting the mark declared to be well-known and minimizing the counterfeiting risk.

Words, devices, numbers, 3D shapes and color combinations are all registrable in China, though it's best to register devices separately from words. IP owners should register Chinese character versions of their mark wherever possible, including any names that Chinese consumers give the products.

Foreign IP owners who discover that their mark has already been registered should consider filing a non-use cancellation application, negotiate with the registered owner and come to an unofficial agreement on coexistence or buy it from them.

"This is very much a help-yourself jurisdiction," said Loke-Khoon Tan, as he explained how brand owners should train staff to look out for, and report, sightings of fakes, consider setting up a hotline for consumers to report suspicious products, maintain an internal list of suspected infringers, and verify and catalogue samples of counterfeited goods.
Companies should research any relations between infringers and law enforcers and expect to lobby hard to get their case investigated as efficiently as possible.

Fly-by-night counterfeiting operations are unlikely to pay taxes and almost certainly flout environmental standards and labour laws. IP owners may be able to get help from officials in related ministries in their fight against factory managers who ignore the law. Brand owners should consider inviting local media to cover raids and any arrests of infringers to send out a statement of intent to would-be counterfeiters. Local officials may also like the positive attention the publicity could bring them.

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