Aggressive strategy meets brand protection challenge

Since leaving the familiarity of the bench to become an intellectual property (IP) lawyer, the author has frequently heard the pessimism and negativity of persons when discussing protection by foreign companies of their brands in China. One can list the reasons as: (1) the uneasiness with the actual situation of China’s legal environment and IP protection; and (2) the constant stream of passing off and copying that occurs, giving a strong feeling of “regardless of how the wildfire has obliterated everything, with the spring wind it all comes back to life”.

According to the White Paper on the State of Judicial Protection of IP by Shanghai Courts in 2015, issued by the Shanghai High Court, Shanghai courts concluded 409 foreign-related civil IP cases that year, accounting for less than 5% of the total number of civil IP cases, and of them, 123 were trademark disputes involving European and American brands, which reflects, to a certain extent, that certain foreign enterprises have adopted a relatively conservative strategy toward brand protection in China.

Although China’s legal environment still requires improvement, China’s law enforcement and judicial authorities have made pronounced progress in their efforts to protect foreign brands. The author, as a former member of the judiciary, feels that the winning percentage of foreign enterprises in IP legal actions is high, an impression that is corroborated by the data made public by Chinese courts. Of the foreign-related IP cases tried by Shanghai courts in 2014, the foreign party prevailed in more than 80% of them, and in more than 90% in Zhejiang. We have reason to be optimistic that there is hope for IP protection in China, even though that will still require some time.

Sun Jinlin is a partner at Jincheng Tongda & Neal