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Protecting Scottish IP In China

Protecting Scottish IP In China

A number of years ago, I was asked by the Harris Tweed Authority to support their work in China.  The Authority had witnessed a growing interest in the HARRIS TWEED brand from the emerging middle class in China and wished to ensure that the brand was properly protected there.  Whilst Harris Tweed garments have long been made in China, the emerging interest in the brand amongst the emerging middle class in China is relatively new.  Observing its primary function as “Guardians of the Orb” the Authority has a key appreciation of the opportunities for Harris Tweed in China, but also the risks of properly managing the brand.

One of my first conversations was with an intellectual property lawyer who had lived much of his life in China.  Having experienced some frustration whilst trying to litigate in the Hainan Province of China in the 1990’s, I explained to him my general perception was that it was difficult to enforce IP there and I asked if that was the reality.  His answer was that asking what it is like enforcing IP enforcement in China is like asking what it is like enforcing IP in the UK, continental Europe, North Africa and the Middle East.  There is no single answer.  The right response very much depends on which rights you need to protect and where. However, across the whole country the ability for Western companies to enforce legal rights in China has greatly improved.

My work in China, for a number of clients, in recent years has very much eased my early concerns.  It is my experience that on the Eastern coastal area of China in particular, in the municipality of Shanghai, the Shandong District and Beijing there is a great deal of respect for intellectual property rights and UK businesses can expect to enjoy great support if doing business there. In particular where there are now specialist Intellectual Property Courts in Guangzhou, Beijing and Shanghai we can expect protection of IP equivalent to EU standards.

Working with Lorna Macaulay, the Harris Tweed Authority’s Chief Executive, we developed a strategy for seeking to safeguard the brand in China.  This has included:

  • Obtaining market intelligence of the use being made of the brand, both in street markets and online auction sites such as Alibaba, AliExpress and Taobao;
  • Securing support from with the British Embassy, the UK Intellectual Property Office and the SDI so that support is in place;
  • Working with the Authority’s trade mark attorneys, Marks & Clerk, both in Edinburgh and in Beijing, so that appropriate trademark registrations are in place;
  • Registering key domain names which are of value;
  • Meeting and fully briefing the Authority’s lawyers in China (Rouse & Co in Shanghai) to ensure that they properly understand the brand and our objectives for it;
  • Engaging with the Administration for Industry & Commerce (the Chinese equivalent to our Trading Standards) to ensure that the officials which we may need to turn to for support properly understand the brand and our objectives for it; and
  • Continually monitoring physical and online markets to ensure that the protections which are in place are having effect.

Jumping forward to 2016, I presented on our work in China at an event organised by the Great Britain China Centre in partner with the China Britain Business Council and Scottish Financial Enterprise hosted by the Law Society earlier this month.  The event was attended by a delegation of senior officials from the China Law Society keen to collaborate with lawyers in Scotland and helping us overcome the misconception that IP is not respected in China.    The reaction to my presentation made clear there was real willingness from the Chinese delegation to collaborate with Scottish businesses and to offer reassurance that China does respect intellectual property rights.

It is unfortunate that the fiction that foreign companies cannot enforce their IP in China is perpetuated by the relatively rare, but high profile cases where large Western brands have failed to secure their rights timeously.  I would encourage any Scottish business thinking of operating in China and concerned with IP protection to look at the facts rather than generalisations made.  A recent statistic I was given is that when a foreign company litigates in China, the foreign company wins 70% of the time.

Colin Hulme
Partner

This article was published in The Herald on Monday 18 July 2016. To view the article click here.

LChalmers