A few weeks ago, one of the lawyers in my office, emailed me an article co-written by a law school friend. The article was on trademark infringement in the clothing industry and on what clothing companies/fashion companies should do to protect their China trademarks, written by Yujing Shu and Hai-Ching Yang of KLGates. The note with the email said that she thought I “would be interested in the article because we represent so many clothing companies with their China IP.” I was very interested in the article for those exact reasons, but then chose not to write about it because it did not say anything “new.”
Since then, one of our IP lawyers spoke at a “Legal Protection in Fashion” event and later told me of how interested the audience (and even the other panelists) were in how to protect fashion IP in China. Then the other day, I spoke with a large clothing company and was surprised at their lack of knowledge regarding how to protect their IP in China. They essentially did not even know it was important or even possible.
All of this is my incredibly round-about way of noting that I should have weeks ago written about the article that was emailed to me. The article is entitled What Your Company Should Know About Protecting Against Trademark Infringements in China’s Fashion Apparel Industry and it does a nice job setting out the basics of what fashion apparel companies need to do to protect their IP in China. And though the article does not contain anything particularly new, that is only because the way to use China’s legal system for trademark protection has not changed in quite some time and does not vary much by industry.
Here is their spot-on advice:
- Register your trademark as quickly as possible. Since China follows the “first to file” policy, registering your trademark as quickly as possible is the key to protecting your IP.
- Properly register your trademarks by registering multiple categories and subcategories of goods. As a preventative measure, companies should register their trademarks in as many closely related categories and sub-categories of goods.
- Vigilantly monitor infringement actions and use China’s administrative process. Companies should use the administrative process to cease infringing products and tools, impose fines, and seek court imposed raids if necessary.
- Use court proceedings to seek damages and to obtain well-known trademark status. As courts have become the main channel to protect IP, companies can use litigation to serve as warnings for other violators. Companies can also seek the court’s recognition of “well-known trademark” status in current or future cases for increased trademark protection.
Just what every China lawyer has been saying for years now to companies in all industries. We have been saying it because it is true and necessary. Here are some more tips on protecting against trademark infringement in China, all of which apply to the fashion industry:
- Register your trademark or copyright in your home country. Typically it makes sense to do this before you start doing business with China.
- Before doing business in China, consider which provinces do the best job of protecting intellectual property.
- Review and revise your own Web site with an eye towards removing anything that makes for a good target for intellectual property thieves.
- Stay ahead of the copiers by rapidly introducing new products, improving on your existing ones and building your brand image.
- Manage imitation by licensing your IP to Chinese companies.
- Have a contract with your Chinese factories that clearly forbids copying and specifies liquidated damages for violations.
- Use tracking technology to monitor the product you are having made in your Chinese factories.
- Have anti-counterfeiting elements put into your products and/or packaging. I am always amazed at what can be done in this arena.
- Monitor your manufacturers.