China Law Blog

Only a few hours after finishing my post on Timothy Trainer's speech at the recent USPTO seminar on protecting your IP in China, I came across an interesting International News Service article on a Texas shoe company having problems with its China IP that quotes Mr. Trainer extensively.  Entitled, "China Slow to Pursue Fakes, Texas Shoe Company Finds, the article focuses on the many problems confronting Heeling Sports Limited in its efforts to prevent Chinese counterfeiting of its Heelys roller shoes.

Heeling initially used a Hong Kong law firm to pursue administrative claims in China and that met with almost no success.  It has only recently begun pursuing the counterfeiters by using a mainland firm to pursue civil litigation.  To its credit, Heeling's President, Michael Staffaroni, vows Heeling is "not giving up."

As a sort of postscript to the article, there is a list entitled "10 TIPS FOR PROTECTING COPYRIGHTS IN CHINA" that probably should have been more broadly entitled "10 TIPS FOR PROTECTING YOUR IP IN CHINA."  Though the article does not attribute this list to Mr. Trainer, I am guessing it is his. Here goes:      

Apply for a patent or register for a trademark or copyright in the U.S. first and then get information about protecting your intellectual property abroad from the U.S. Patent and Trademark Office. Go to stopfakes.gov/smallbusiness or call 1-866-999-HALT.

Before setting up operations in China, determine which provinces do a better job of respecting intellectual property.

Carefully consider what is on your company's Web site. Anything posted there could be a target for intellectual property thieves.

Outpace imitation by quickly introducing new products, improving existing ones often and building brand image.

Manage imitation by offering licenses or joint ventures to Chinese firms.

Block imitation with tactics such as using preloaded software algorithms in machinery.

Discourage imitation by using tracking technology such as radio frequency identification, taking legal action against customers who buy the counterfeit products and bundling products and services.

Build anti-counterfeiting elements into your products, labeling and packaging, such as light-sensitive ink and other unique design features.

Ensure there is at least one company employee on site at all times at your production facilities.

Allow as few people as absolutely necessary to have access to your company's core intellectual property. Segregate your property so that almost no one can see the entire picture.

This is all good advice, but it ignores one absolutely critical item: the need to register your IP in China, without which legal protection is nearly impossible.  Or, to quote the always pithy What About Clients? Blog, "Dude, register your IP in China."