Our clients often ask that we put a provision into their manufacturing agreements prohibiting their Chinese manufacturer from making the same product for anyone else. This naturally leads to a long discussion, that often goes somewhat like the following, using a laptop computer bag as the example:

China Lawyer:  What do you mean by a product like yours?  A laptop bag?

Client: That would be great. Is that possible?

China Lawyer:  Not unless you are planning to commit to buying $800 million worth of bags a year. Your Chinese manufacturer probably makes laptop bags for 40-50 other companies and unless you commit to massive yearly volumes, there is no way it is going to just make bags for you. What we need to do is figure out what makes your laptop bags different from everyone else’s laptop bags and see if we can get your manufacturer to agree not to make laptop bags for others that contain your unique features.

Client:  That makes sense. Well, first off, our name is unique and I certainly don’t want our Chinese manufacturer making bags with our name on it for anyone but us.

China Lawyer: Absolutely. We will put that in there, but also, we are going to need to register your brand name as a trademark in China so that nobody in China (not just your manufacturer) can make bags with your name on it. We also need to register your trademark in China to prevent anyone else from registering your name and then being able to stop you from using your own name  at all in China. What else distinguishes your bags from others?

Client: We use orange stitching and I don’t think anyone else does that.

China Lawyer:  Great, so we ask that this manufacturer not make bags with orange stitching. What else?

Client:  We have a side pocket that perfectly holds a passport. What about something like that? Oh, and we have an orange rubber tab on all of our zippers.

China Lawyer:  Perfect. We will put a provision into your OEM Agreement that prohibits your Chinese manufacturer from making laptop bags with any of this attributes.

Client: Are these provisions enforced?

China Lawyer:  Yes, in both China and the United States.

Client:  The United States?

China Lawyers. Yes, the United States. If one of your US competitors were to go to your Chinese factory and start purchasing laptop bags with stitching or zippers or a side pocket like yours, we would immediately send them a letter, attaching your OEM contract with your Chinese manufacturer. That letter would point out the provision saying that your manufacturer is not allowed to make laptop bags with your specific attributes and then it would say that your competitor’s getting such laptop bags from your Chinese manufacturer constitutes tortious interference with your contractual relation. We would then say that if they do not immediately cease buying such bags, we will have no choice but to sue. These letters generally work because the US company either did not know it was infringing on your contract rights or else because it simply does not want to be sued in a US court, even if it may think it will eventually prevail. These provisions tend to be very effective.

As China lawyers, we are all too frequently contacted by our clients who need help dealing with IP infringement in China.  As a first step, we analyze the situation and propose a course of action.  The following is an amalgamation of memoranda, done so as to convey both what goes on out there and how to deal with it.  Most importantly, however, it is intended to provide a path towards preventing IP infringement through proactive trademark and copyright registrations.

In reading the memo, please note that Company A is our client and the company to whom the memo is written.


This memo outlines next steps for dealing with the ongoing infringement of Company A’s intellectual property in China.

As you are already aware, Website1 and Website2 currently have multiple listings for unauthorized “Brand Name A” products: Website1 has listings for “The Brand Name A” ______ and “The Brand Name A” ______; Website2 has listings for “The Brand Name A” ______ and “The Brand Name A” _______. I am certain that we could find numerous other instances of infringement on other websites if we looked, but these are two of China’s biggest online marketplaces. For instance, we just ran a search on another leading e-commerce site, ______, and found a listing for “The Brand Name A _______.” This _______ is identified as having been published by “________ Publishing,” which we do not recall being one of your OEM suppliers.

To generalize, you are facing — and will continue to face — two main kinds of infringement: (1) the unauthorized manufacture and sale of products that you already produce (e.g., The Brand Name A _______) and (2) the unauthorized manufacture and sale of products that you do not already produce (e.g., The Brand Name A _________ and The Brand Name A _________).

Generally speaking, the most efficient way to enforce IP rights in China is with a registered trademark. China has no common-law trademark rights, which means that unlike in the United States, Company A does not have rights to the “Brand Name A” trademark with respect to every conceivable product in China. Indeed, the only way for Company A to obtain trademark rights in China on a particular product is for Company A to register a trademark covering such product. Right now, your trademarks in China only cover certain products in Class ____ (specifically, _________) and in Class ____ (specifically, __________________, sold as a unit). Nearly every other product — whether one you actually make (like ________ or _________) or one you do not make (like _________ or ____________) — is not covered by your existing trademarks.

Our recommendations follow:

I.  File IP Complaints with Website1 and Website2.

The fastest and easiest way to have infringing links removed from a Chinese e-commerce site is to submit a request to that site. Website1 is part of the ________ group of companies, and so you should be able to use your existing _______ account to file an IPR complaint. With respect to Website2, considering the past difficulties in communication that we have had with the company that runs that site, we recommend that we contact the supervisor at Website2 (with whom we have dealt in the past) who handles IP complaints, and submit a complaint directly to him, rather than having you submit such a complaint through their online form.

The above method should work fine with The Brand Name A ________ product, assuming the postings are not for the resale of legitimately purchased goods. However, it is possible that the above method will not work (and in fact it should not work) with the ___________product on Website1 or the ___________product on Website2, because your China trademarks do not extend to such products. We should nonetheless proceed as if the trademarks do extend to such products. We note that this method worked with Website2 before, largely because Website2 has shown itself to be relatively unsophisticated in terms of its understanding of trademark law.

II. Register Additional Trademarks with the Chinese Trademark Office

Even if Websites 1 and 2 both agree to take down all of the objectionable links, relying on Company A’s two existing China trademarks is not a viable long-term solution. We strongly suggest that you file additional trademarks to cover (1) all of the goods that you already sell, (2) any goods that you might sell in the future, and (3) any goods that you want to prevent anyone else from selling as a “Brand Name A” product.

This last category is the trickiest, for two reasons. First, how do you decide which goods to protect? You probably do not need to worry about “Brand Name A” carburetors or pianos. On the other hand, you probably should worry about “Brand Name A” candles and picture frames. (Some large companies with nearly unlimited budgets, like _________, simply file trademarks to cover virtually all possible goods.) Second, China has a use requirement for all registered trademarks: if you do not use a registered trademark in commerce at least once every three years, it will be at risk of cancellation. That said, China does not have an affirmative requirement to prove use; a trademark is presumptively valid unless a third party challenges it for non-use. This means that if you file a trademark solely to prevent a third party from using that trademark, it will be valid until a third party challenges it, but will be valid for at least three years.

We propose that we work together to come up with a list of classes and goods that will achieve the broadest trademark protection for Company A’s intellectual property. We suggest that you file any such additional trademarks for (1) the phrase “_____________” (2) “The Brand Name A” logo, and (3) any other logos or phrases that you would like protected.

It generally takes around 16 months to register a trademark in China, and you have no rights in a trademark until registration, so we advise moving quickly.

III. Register Copyrights with the China Copyright Protection Center

China’s copyright law is formally quite similar to that of the United States: a valid Chinese copyright exists at the moment a creative work is put into tangible form in any other country that is a signatory to the Berne Convention. However, as a practical matter Chinese agencies and courts do not take action on an unregistered copyright.

Registering your copyrights will allow you to take action against counterfeit Brand Name A products, whether or not the postings (or products) are identified as such. Armed with such copyright registrations, you could take action against (for instance) a bootleg _______ with another title on the cover, a _______ that is simply called a “_________” _______, and a ______ that contains the exact same content but with a different title.

We strongly suggest that you register copyrights for all copyrighted material created or controlled by Company A: your _______s, ________s, and _________s, and also any _________ that have a tangible form, whether as ________s, ________s, or otherwise.

It generally takes around three months to register a copyright in China. You have no enforceable rights in a copyright until registration, so we would advise moving quickly on this as well.

IV. Register Trademarks and Copyrights with China Customs

Registering your trademarks and copyrights in China establishes your rights in such intellectual property. Enforcing your rights requires additional steps. As noted above, to remove infringing postings it is virtually always necessary to contact the e-commerce site. And to stop infringing products from being exported from China requires, at minimum, that you separately register your trademarks and copyrights with China Customs.

Note, however, that China Customs only inspects large shipments. They will not inspect small shipments for infringement, primarily because they cannot determine whether such shipments represent counterfeit goods or legitimately resold goods.

Registration with China Customs is only possible after issuance of formal trademark and copyright certificates.  For this reason as well, we advise moving quickly with trademark and copyright applications.

V. Attempt to Identify Infringing Parties

Though fighting IP infringement in China can be like playing a game of whack-a-mole, sometimes it is possible to discover the identity of infringing parties. In many cases the infringing manufacturer has a connection to a manufacturer you are using to produce your goods. Sometimes they are one and the same. Needless to say, knowing the identity of the infringing party informs the potential actions that we can or will want to take.

We would be happy to discuss the possibilities for investigating the identity of infringing parties. At the very least, we should collate and analyze the information available online. To the extent such infringement becomes systematic and/or endemic, we should discuss further steps such as hiring third-party investigators in China.

VI. File a Complaint with AIC and/or File a Lawsuit

Once we have solidified Company A’s IP portfolio by registering the appropriate trademarks and copyrights and identifying serial infringing parties, we can consider taking formal action beyond requesting e-commerce sites to remove infringing postings. There are two main options for formal action:

(1) File a complaint with the Administration of Industry and Commerce (AIC), the national-level agency that handles IP disputes and enforces IP rights.

(2) File a lawsuit with a Chinese court that has jurisdiction over the defendant.

These approaches both have good and bad points. Filing a complaint with the AIC is usually cheaper and more likely to result in a quick injunction and/or a seizure of the infringing goods. However, the AIC does not have the power to award monetary damages for infringement or to require indemnification; for that, you would need to file a lawsuit.

Note that for both of the above approaches for dealing with China IP infringement, the identity and location of the infringing party makes a big difference. If the infringing party is a large state-owned enterprise, or is the major employer in a smaller city, the chances of either the AIC or the local courts taking meaningful action go down

We are not at this stage yet, so it would be premature to outline a formal strategy for pursuing infringers. But generally speaking, we would work with our partner law firms in China to formulate the best strategy for you.


“The Brand Name A” has become a famous brand in America and beyond, and because of that you will inevitably be facing increasing intellectual property infringement in China. To fight against this we recommend that we move forward with (1) filing IP complaints with Websites 1 and 2; (2) registering additional trademarks in China; (3) registering copyrights in China; and (4) registering your existing trademarks with China Customs.

We wrote on China domain name scams last year, but since we are seeing an increase in these from our clients and readers, we are going to write on it again.  Just about everyone doing business in China or doing business with China gets or will get one or more of the following:

1.  Preventing someone in China from registering your domain name;

2. Registering your domain name in China, “just in time” to prevent someone from beating you to it;

3.  Making sure that your domain name registration in China does not expire.


Near as we can tell, every single one of these that we have seen (and we have seen at least one hundred of these (because clients and readers are always sending them to us to review) are a scam. Number 3 above may not be a scam if you actually have a Chinese domain name, but if you do not, it is.

You also may get emails from someone claiming to have already registered some iteration of your company name (or one of your product names) and seeking to sell it to you. For example, if your company is called “xyz” and you already own the xyz.com domain name, your email may come from someone who has purchased and now wants to sell you the xyz.cn domain.

STRATFOR did a China Security Memo on how these emails would increase when ICANN ( Corporation for Assigned Names and Number) started accepting applications for domain names with non-Latin characters (i.e., Chinese) and that appears to have been the case now that ICANN has done that.

So what should you do when you receive an email offering to protect you from “others” who are seeking to register a Chinese translation or variant of your name or product or someone seeking to sell you an already registered translation or variant.

First off, as soon as possible, register whatever domains you need to protect your company or brand. Determine now what domain names you care about so you do not need to make this determination with a gun to your head. Right now is the time to think about Chinese character domain names.

Secondly, if someone has already actually registered a domain name that is important to you and they are now offering to sell it to you, you essentially have three choices. One, let the domain name go. Two, buy it from the company that “took” it from you. Or three, pursue legal action against the company that took it from you.

Preemption by registration is your best and least expensive protection. In other words, if you do not want someone taking your company name or one of your product names (or some variant of these) and using them for a domain name, register those as domain names right now. You should also figure out whether it makes sense for you to register your trademark in China or wherever else you do business.

What are you seeing out there?

According to the Wall Street Journal, Beijing No. 1 Intermediate People’s Court just upheld a Chinese lower court ruling and ordered two Chinese companies to cease selling knockoffs of the impotency drug Viagra and to compensate Pfizer for trademark infringement.

The Intermediate People’s Court ordered Beijing Health New Concept Pharmacy Company and Lianhuan Pharmaceutical Company to stop making little blue pills and ordered Lianhuan to pay Pfizer 300,000 yuan ($38,000) in damages. Pfizer commenced this lawsuit in September 2005.

A Pfizer spokesman stated Pfizer sees this decision as “a strong indication that the Chinese government is moving in the right direction in protecting intellectual property rights for all innovators.”

Earlier this year, the same court ruled in favor of Pfizer by upholding Pfizer’s Viagra patent and overturning the 2004 decision by China’s patent review board that allowed local drug makers to sell generic versions of Viagra in China.

Though I have not read the intermediate court’s decision, it appears it was simply upholding Pfizer’s trademark blue pill look. I often write about how despite China’s bad rap on intellectual property rights (IPR) enforcement (most of which is justified), its courts take trademarks very seriously and those who pursue infringement of their China registered trademarks nearly uniformly do well in China’s courts. See “China’s Trademark Laws — Simple And Effective.”

This case is yet another example of a foreign company registering its trademark in China and then securing court assistance to protect it. The hope is that as companies continue to win such cases in the courts, the counterfeiting going on outside the court will decline.

Bottom Line: If you are a foreign company doing business in China, you should register your trademarks in China. Why? Because it works.