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INTELLECTUAL PROPERTY RIGHTS: Strategy for SMEs in the EU Ceramics Sector – Part I
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altSince the ceramics industry in the EU is affected greatly by low-cost ‘copies’ of products being imported into the EU and an increasing number of such imports are coming from China, it is important that rights holders create and implement an IPR strategy. This should include registering and protecting their rights in China (even if it is not a primary market for their products), monitoring industry trade fairs, developing a well-timed and proportionate warning letter campaign, recording their rights with Chinese customs and initiating selective civil actions — a strategy that may enable infringement to be stopped at the source (i.e. China). Once infringing products leave China for other parts of the world they become difficult to track. Part I of this two-part series describes the types of intellectual property most relevant to the ceramics industry and outlines the strategy for registering those rights in China. Next month’s edition,  Part II, features measures SMEs can simply and cost-effectively adopt to enforce their IPR in China.

 

The categories of IPR relevant to the ceramics industry in China are design patents, trade marks, copyright, invention patents, and utility models. In certain circumstances actions for unfair competition may also be applicable. Although China’s laws and regulations in relation to unfair competition may protect against certain acts such as copying trade dress, it should not be relied upon as a first line of defence. To protect your IPR in China, you should register your rights.  

 

Design Patents

 

Design and distinctiveness are important for certain ceramics products especially those targeted at consumers (i.e. ornamental-ware, tableware, sanitary-ware, etc). As leaders in design, EU producers face the challenge of maintaining and protecting this advantage. This begins with acquiring rights in China to protect their unique designs.

 

In China designs can be protected by registration under the Patent Law. So-called ‘design patents’ protect original designs relating to the shape or pattern of an object, meaning that the outward appearance of ceramics products may be protected by a design patent. Design patents are typically granted within 9 to 12 months and last for 10 years.

 

Trade Marks

 

altIn China, a trade mark can be protected by registration under the Trade Mark Law. Protection lasts for an initial period of 10 years and is renewable indefinitely for successive 10 year periods. However, it may take 2 to 3 years for a trade mark to be granted. Foreign individuals and entities seeking to register national/Chinese trade mark(s) must instruct a Chinese trade mark agent to apply on their behalf.

 

Strategic use of trade marks can be particularly important where a product design has not been registered. Embossed trade marks or marks that are integrated into the design make it difficult for infringers to distinguish between necessary functional elements and non-essential branding elements. Some infringers may not be so careful as to alter the branding elements if they are closely incorporated into the design and therein copying of the design may result in copying the trade mark. If such marks are registered in China, it gives ceramics manufacturers legal rights with which to protect their products.

 

Copyright

 

Copyright protects the creative or artistic expressions of an idea.  Porcelain dolls, designs on tiles, vases, mugs etc can easily be understood and viewed as works of art, whereas bathroom sinks, toilets, clay pipes and roof tiles may (or may not depending on level of artistic merit) be perceived as merely functional products lacking any originality. However, even the latter ceramics products may contain a certain degree of creativity and may be afforded some degree of copyright protection. Copyright protection may attach to the work but would stop at its functionally-dictated aspects.

 

Unlike patents and trade marks, copyright automatically vests after an original work is created, and registration is not required for the work to be protected since China is a member of the Berne Convention for the Protection of Literary and Artistic Works. However, voluntary registration of copyright in China is recommended because, when a copyright dispute arises, registration acts as prima facie evidence that copyright subsists in the work and that the stated registrant owns the copyright. Registration takes approximately 2 to 3 months. In practice, a registration certificate is also required in most cases where the copyright owner wishes to take administrative action against infringement.

 

altIdentify and Register IPRs in Ceramics Products

 

Branding, artistic and technical elements may be embodied in a variety of ceramic products. These elements may give rise to protectable IP but may go unregistered or even unidentified. Like in many other countries, in China most forms of IPR require registration. It is advisable to prioritise amongst products, registering the most valuable or those most widely sold and distributed.

 

Registration of rights gives the registrant legal bases to act against infringers, but failing to register may make it very difficult, if not impossible, to seek effective administrative or judicial redress at a later date should problems arise. Without them, taking action may be difficult, more costly and complicated and the results less certain. One obstacle to overcome is to first identify the IP that subsists in products. If they are not initially recognised registration would not even take place.

 

Most people think of slogans, names and logos rather than the shapes of products when deciding what to register as trade marks. Although difficult to register in some circumstances, the shape of a product may be registrable as a three-dimensional trade mark.

 

The design elements or outward appearance of a ceramics product may be protected by a design patent. Any new product development processes should be assessed early on for IP risks and opportunities. By delaying this assessment, a company may run into unanticipated risks and forfeit IP protection. Notably, once a product is launched and broadly sold in the marketplace, the ability to register design patent rights is likely to have been forfeited.

 

altCopyright may go unidentified by companies that fail to consider designs in such mundane and utilitarian objects such as toilets, sinks, bathtubs and the like as works of art. However, copyright may subsist in the artistic expression of a design embodied in such ceramic items. These works of applied art arguably contain a degree of originality to attract some degree of copyright protection (albeit excluding the functionally-dictated aspects). Therefore the process of creation should be well-documented. That is, rough drafts, previous versions of designs, evidence of the evolution of the design idea are all useful to demonstrate that the ceramics manufacturer developed (and how it developed) the works. Agreements between the manufacturer and the artist (if the work was commissioned or licensed) that show that the relevant rights were assigned, or other evidence that would support copyright ownership and independent effort in the creation of the work, should also be kept.


Take-Away Messages:

 

• Make sure your products are properly registered in China as design patents, trade marks, copyright, invention patents and utility model patents. Do this as early as possible because in China, if it’s not registered, it does not belong to you!

 

• Even if China is not your primary market, register your IPR in China and with China Customs, to prevent low-cost ‘copies’ from entering the international market.

 

Return next month for Part II, including strategy for enforcing IPR in China. 


By Philippe Healey Project Manager, China IPR SME Helpdesk

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