China has grown to be one of the largest markets for fashion businesses in the world. However, with opportunities come challenges. In the Chinese market, one of the biggest challenges for fashion businesses is how to deal with counterfeit products. In this article, we discuss some of the options that fashion brands have to protect their shoe designs against counterfeit products in China.
First of all, let’s get some basic ideas of the enforcement options and the three types of protection available on shoe designs in China.
An intellectual property rightholder is usually able to enforce its rights before courts or administrative authorities (such as the local administration of industry and commerce). Compared to enforcement before the courts, administrative enforcement is usually quicker and less expensive. However, the administrative enforcement authorities are usually reluctant to take action if the case is complicated. Further, the rightholders will only be able to obtain damages in enforcement before courts.
It usually takes around four to six months to obtain a design patent registration in China, if no official action is raised. A design patent registration is valid for
ten years and cannot be renewed.
It usually takes around six to nine months to obtain a trademark registration in China, if no official action or opposition is raised. A Trademark registration is valid for ten years and can be renewed every ten years.
It is possible to obtain 2D and 3D trademark registrations for shoe designs.
Under the current Chinese practice, it is extremely difficult to obtain a 3D trademark registration. An applicant will usually have to appeal through three levels up to the higher court level in order to obtain a 3D trademark registration, and the whole registration process is likely to be costly and last up to three years. However, the enforcement of a 3D trademark registration should, once granted, be relatively straightforward either before courts or before administrative authorities.
On the other hand, a 2D trademark registration is relatively easy to obtain, but the enforcement of a 2D trademark registration against 3D products produced based on the registered 2D design would be less straightforward. A registrant may have to obtain several favorable judgments from the courts of different levels in different areas of China before it can enforce its 2D trademark registration with the relevant administrative authorities nationally.
Copyright is an automatic right in China, but it is always recommended to obtain copyright registrations so that it will be easier for rightholders to prove their rights in enforcement. It usually takes one month to obtain a copyright registration. The Copyright Protection Centre of China only conducts formalities checking and does not conduct substantive examination on a copyright application. In China, copyright on an artwork usually lasts for 50 years if the copyright holder is a company or the author plus 50 years if the copyright holder is an individual.
Comparing the three types of protection, we often recommend design patent registrations as the first choice for protecting shoe designs. This is because a design patent registration is relatively easy to obtain and the enforcement of a design patent registration of a shoe design in China is possible either before the courts or before the administrative enforcement authorities.
The key issue to flag regarding a design patent registration is that unlike most other jurisdictions (such as the UK, the US, Japan and Korea) China does not offer a grace period for filing a design patent application (except under limited circumstance), which means that a design patent application must be filed prior to the disclosure of the shoe design to the public. Once a shoe design is disclosed to the public, it is not then possible to obtain a valid design patent registration. It is therefore of utmost importance that a design patent application should be filed in China prior to the disclosure of a shoe product anywhere in the world.
If a design patent application is not filed prior to the public disclosure of the shoe product, we would recommend obtaining trademark registrations for the shoe design as a 3D mark and/or a 2D mark. If budget is limited, we would recommend opting for a 2D trademark registration over a 3D trademark registration because (1) it is generally quicker to obtain a 2D trademark registration and (2) the chance of success in obtaining a 3D trademark registration is generally lower. Additionally, even if a design patent registration is secured, we would recommend obtaining a trademark registration so that the shoe design could still be protected after the expiry of the design patent registration.
The current China Copyright Law is unclear about the
protection of copyright in shoe designs. Therefore, it is
usually extremely difficult to convince the administrative
authorities to conduct administrative enforcement
based on copyright against counterfeit shoes. With
respect to the enforcement before the courts, our
observation is that the chances of success are not
promising. Generally speaking, the Chinese courts
refuse to enforce the copyright in shoe design drawings
against shoes produced based on the design drawings
on the basis that such copy does not constitute a copy
in the copyright law context. We have seen a Chinese
district court enforcing the copyright on a garment
prototype against copy products and a Chinese
intermediate court enforcing the copyright on several
wedding dresses as works of applied art against copy
products. These two cases may be of referential value
for enforcement of shoe designs before the Chinese
courts. However, as China is a civil law jurisdiction, the
Chinese courts are not bound by precedents and will
conduct reviews on a case-by-case basis. Considering
these, we are inclined not to recommend protecting
shoe designs based on copyright in China unless the no
protection is available.