English Speaking Chinese Lawyer: Intellectual Property Q&A – Part 1
English Speaking Chinese Lawyers: Introduction to this series of blog posts
- Western lawyers aren’t allowed to practice in China.
- Chinese lawyers fluent in English are hard to find and expensive.
- AsiaBridge Law carefully screens, trains and coordinates a network of local lawyers across Asia. Lawyers are selected for the right mix of professionalism, honesty and affordability.
- AsiaBridge Law paralegals coordinate local lawyers on behalf of the AsiaBridge Law clients while providing account management in English, Spanish, Portuguese and other major languages.
In this series of blog posts, our Chinese lawyers answer some of the more common questions about legal issues in China, with a focus on intellectual property protection, dispute resolution and court cases in China.
The answers are provided for general reference and are given in a straight forward format, without the “Chinglish” or “Legalese” that you may encounter when dealing with other attorneys in China.
My Intellectual Property is registered in my home country. Am I protected in China?
English Speaking Lawyer in China:
If you have registered your Intellectual Property in a nation that is party to the World Intellectual Property Organization (WIPO), in theory, you have some basic protection in China. However, in practice, there are a number of loopholes commonly exploited by Chinese entities to "legally steal" WIPO registered IP in China.
For a detailed look at how to protect yourself and close up exposure to these loopholes check out the article: Do I Have Coverage in China if I Register My IP Via WIPO/ Madrid System? But in the meantime, here are some important considerations:
In terms of China IP, you should be aware of the following if you are considering to file via WIPO.
- No chance to revise or adjust application when using WIPO
Some international companies filing a trademark through Madrid System may end up wasting resources and even face getting rejected after waiting for 12 to 18 months. Normally, no pre-application screening is performed and there is no chance to revise an application when you use the Madrid system. That step is available if you register you IP with a Chinese lawyer directly in China.
- Lack of protection under WIPO
Even though the trademark has been officially registered in China through WIPO, troubles may arise late when you wish to enforce you company’s rights in China. Although a WIPO certificate states the company’s rights under Chinese trademark law, in actual business and legal application, the Chinese courts, authorities and business associates frequently do not acknowledge the certificate provided by WIPO, instead they will require a copy of a certificate issued by Chinese Trademark Office (CTMO)!
- No chance to select the categories under the classification
When you apply in China directly, you can decide the subclasses that you want to cover in your application. But when you file in the Madrid system, they will select which subclasses for your application without consulting you. This could cause lots of headaches down the road.
English Speaking Lawyers in China: Read more about it!
Related content can be found at AsiaBridge Law’s China Business, Law & Sourcing Library.
ABL Blog: Sr. Editor and Primary Content Creator: Michael J. Bellamy
Originally from Upstate New York, Mike moved to Asia in 1993 and is a China business advisor to both Fortune 500 companies and small businesses. Recognized as an expert on doing business in China, he has been interviewed by WSJ, CNBC, FT & Bloomberg.
A featured presenter on China issues at seminars, trade shows and corporate events across the globe.
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