Designers and Paris Fashion Week: How to Protect Yourself Against the Risks of Counterfeiting in China?

Paris Fashion Week began on September 25. This is an opportunity to remind creators of the importance of adopting a comprehensive IP strategy, especially when exporting their creations to countries where counterfeiting is widespread.

According to a recent European Commission report on the protection of intellectual property rights in third countries, China is the country of origin of 70% of counterfeit goods seized in the European Union and 76% of counterfeit goods from e-commerce.

It is therefore essential to protect your intellectual property rights and enforce them in China through the registration of a national trademark, the registration of designs and models or the preventive constitution of proof of creations.

TRADEMARK REGISTRATION IN CHINA: PROTECTION AGAINST BAD FAITH FILINGS AND COUNTERFEITING

The registration of the trademark makes it possible to monopolize in a given territory the use of this sign (name, logo…) to designate the goods or services covered by this trademark. Since consumers associate the brand with the original identity of a product, it is essential and strategic to protect it in order to guard against misuse.

If a trademark registration at the level of the European Union is common, it is insufficient when exporting products outside the Union, for example in China, a particularly attractive market where difficulties can then arise:

TRADEMARK SQUATTING

Chinese trademark law, like French law, is based on priority in time: the first applicant becomes the owner of the trademark in the designated territory.

Unfortunately, it is common for a European trade mark proprietor wishing to extend his protection abroad to discover that an identical trade mark has already been registered by a third party.

This practice of “trademark squatting” is widespread, especially in China where the European market is closely monitored in order to register in advance trademarks that are developing on the European market. The objective of the “squatters” is to sell counterfeits, to take advantage of the reputation of the trademark to sell undamaged products or to force the original owner to buy back the trademark.

This practice is theoretically prohibited because it is a deposit in bad faith. However, the procedure for recovering the rights to the said trademark is long, complicated and costly in the absence of prior local filing.

Although the Chinese National Intellectual Property Administration (CNIPA) has been trying for some years to refine the examination of trademark filings to identify those in bad faith, it remains strongly advised to anticipate this problem by filing a trademark in China at an early stage.

TRADEMARK COUNTERFEITING

Counterfeiting consists of the reproduction, imitation, total or partial use of an intellectual property right without the authorization of its owner. As mentioned above, it is unfortunately common in China.

The registration of a trademark in this country allows the owner to protect himself against the sale of goods using an identical or similar trademark to designate identical or similar goods. This may include:

– either copies of the original creations, in this case there will be trademark infringement and potentially design and model or copyright;

– or the reproduction of the trade mark on goods distinct from those marketed by the proprietor of the trade mark.

It is much simpler and more effective to fight against counterfeiting, especially that of products exported from China, if the trademark is registered locally. Indeed, in addition to amicable or judicial actions against the counterfeiter, it is possible to register his trademark with Chinese customs who can then seize the products in order to avoid their marketing.

Be careful, if the designer plans to distribute his products in Hong Kong, a separate deposit will be required.

DESIGNS IN CHINA: ADDITIONAL PROTECTION

Protection through design registration in China is potentially open to every fashion design design.

Although it is too time-consuming and costly for designers to register all designs, given the rapid renewal of collections, this protection should be considered, at least for certain pieces. The creator will be able to limit himself to the protection of iconic designs or those best received by the public, and be satisfied with the protection offered by copyright (without registration) for the rest, especially in e-commerce.

COPYRIGHT: THE CONSTITUTION OF EVIDENCE OF CREATION

As in France, copyright protection in China is not subject to filing and exists from the original creation. Any new fashion creation therefore benefits from this protection automatically, assuming that it is actually original.

However, in case of infringement, it is always difficult to prove the ownership of the rights and the anteriority. It is indeed necessary that the creator is able to demonstrate on what date he made his creation in order to prove that it took place before his opponent.

In order to facilitate this proof , the Copyright Protection Centre of China (CPCC) offers the possibility of voluntary registration of creations, including sales catalogues. The author will then benefit from a copyright certificate to give a certain date to his creations and to fight effectively and quickly against counterfeiting, especially on e-commerce sites.

In conclusion, it is strongly recommended that creators seek the support of specialists in order to establish an IP strategy that takes into account international development options at an early stage of the activity.

Ginestié Magellan Paley-Vincent, France, a Transatlantic Law International Affiliated Firm.  

For further information or for any assistance please contact france@transatlanticlaw.com

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