For quite a while now, China has undoubtedly emerged as one of the largest fashion businesses in the world economy. However, with new opportunities, challenges are bound to arise. One of the biggest challenges for fashion businesses in the Chinese markets lies in dealing with counterfeit or fake products, commonly referred to as replicas. So, let’s make ourselves familiar with how fashion brands can protect their shoe designs in China against counterfeit products by first discussing the basic enforcement options and then the three types of Intellectual Property Protection available on the shoe designs.
ENFORCEMENT OPTIONS IN CHINA
The owner of Intellectual Property (IP) can enforce his or her Intellectual Property Rights (IPRs) either before the administrative authorities, such as the local administration of industry and commerce, or the courts. Administrative enforcement of IP Rights is generally less expensive and quicker in contrast to that before the courts. However, if the case is a little complicated, then the administrative authorities are a bit reluctant to take action. Furthermore, the IP Rights holders can obtain damages only in enforcement before the courts.
TRADEMARK PROTECTION IN CHINA
In China, it usually takes somewhere around 6-9 months to obtain the Trademark Registration, only if there isn’t any official action taken or Trademark Opposition raised. Once registered, the Trademark Protection is available for ten years, which is renewable every ten years as well. For shoe designs, it is possible to obtain 2D or 3D trademark registration. Obtaining 3D trademark registration under China’s current Trademark Law is a difficult task as the applicant has to go through three levels up to the higher court level, and the whole registration process shall take a long time with a lot of expense involved. However, once granted, the enforcement of a 3D trademark registration is relatively straightforward either before the administrative authorities or the courts. On the contrary, obtaining a 2D trademark registration is a much simpler process, but its enforcement is less straightforward.
DESIGN PATENT PROTECTION IN CHINA
In China, it usually takes somewhere around 4-6 months to obtain a Design Patent Registration, provided there is no opposition raised or official action taken. Design Patent Protection is available for ten years in China, with no option of getting it renewed.
COPYRIGHT PROTECTION IN CHINA
Although copyright is an automatic right in China, it is highly advisable to go ahead with Copyright Registration so that the IP owners can prove their rights in enforcement. In China, it usually takes somewhere around a month to obtain the copyright registration, and its protection is available for fifty years if the owner is a company, and an additional fifty years if the owner is an individual, i.e., the lifetime of the author plus fifty years. The Copyright Protection Centre of China conducts only the formalities checking and doesn’t involve in conducting a substantive examination on the Copyright Application.
COMPARING THE THREE TYPES OF IP PROTECTION AVAILABLE ON SHOE DESIGNS
Design patent registration should indeed be the first choice of every company or individual for protecting the shoe designs as it is comparatively convenient to obtain with pretty much straightforward enforcement mechanisms either before the administrative authorities or the courts. The only issue in the design patent registration process lies in the fact that unlike other jurisdictions such as the US, Japan, or Korea, China doesn’t offer any grace period for filing a design patent application. To be specific, it is necessary to file the design patent application before the public disclosure of the shoe design anywhere in the world. If a design patent application isn’t filed before the public disclosure of the shoe design, going ahead with the trademark registration is another option. In this scenario, if you are low on budget, you can opt for a 2D trademark registration over a 3D trademark registration as it is quicker to obtain, and the chances of obtaining a 3D trademark registration are lower. Moreover, even if you have design patent protection in hand for the shoe design, opting for trademark registration would protect your shoe design after the expiry of the design patent registration as well.
At present, the Copyright Law in China is not clear about copyright protection on shoe designs, due to which, it is exceedingly difficult to convince the administrative authorities for conducting enforcement based on copyright against the counterfeit shoes. Also, enforcement before the Chinese courts isn’t promising as they refuse to enforce the copyright in shoe design drawings against the shoes produced corresponding to the design drawings.