SHANGHAI — For emerging designers and established brands alike, navigating China‘s copyright protection system might seem like a daunting task. According to Sindy Ding-Voorhees, an intellectual property law attorney at Kilpatrick Townsend & Stockton LLP, taking preventive measures is an easy first step.
“In China, your rights are protected as long as your trademark is registered. But in the U.S., your trademark right can be established based on the use of the mark in commerce, without a registration,” Ding-Voorhees told WWD in an interview after the Fourth Annual China Fashion Law Forum held in Hangzhou last weekend, which discussed topics ranging from nonconventional trademark protection to compliance issues that brands face in China.
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At the forum, Ding-Voorhees highlighted Christian Louboutin‘s recent victory in China. Last month the French luxury label successfully defended its red-sole stilettos from copycats without a trademark registration.
“Article 6 of the Anti-Unfair Competition Law of China was readily applied because it addresses the scenario where the brand owner has not yet acquired a prior registered trademark in China,” said Ding-Voorhees. “It prohibits parties from selling commodities that are confusingly similar to those, including packaging or decoration, of another owner’s commodity with certain influence. By providing sales records and advertisement spending in China as evidence, Louboutin proved that its red sole shoes as a commodity and its sole red decoration have a high fame and influence in the market, and therefore protected its rights according to the Unfair Competition Law.”
The rampage of bad-faith trademark squatters in the market, who are quick to snatch up any popular corporate names, signs and designs, then gain a profit from trademark buybacks, is another common issue that brands and creators face in the China market.
But there’s good news for brands: in recent years, the China National Intellectual Property Administration has strengthened the protection of well-known trademarks. For example, the CNIPA has been expanding on the meaning of malicious registration. If a trademark has not been used in commerce for up to three years, brands can apply for a cancellation of trademark registration on the grounds of nonuse.
“If you can prove that the person who preemptively registered your mark is a bad-faith squatter, you could file an invalidation action against that bad-faith registration based on the 2019 amendment to the Chinese Trademark Law, which provides more guidance on how to remove bad-faith applications or registrations. The rightful trademark owner should also seek registration strategically and timely. It’s actually not expensive to do so,” said Ding-Voorhees.
Under China trademark laws, it usually costs up to a few thousand renminbi, or a few hundred dollars, to register at the Copyright Protection Center of China. The registration process usually takes two to three months.
Ding-Voorhees said brands should register its trademark as broadly as possible.
“Try to register in as many related areas as possible. Take into account conventional marks such as two-dimensional design marks and unconventional marks, such as layout of a retail store and areas that might be trending or that brands want to expand into, such as Web 3.0-related areas, which typically includes downloadable files, software as a service, and virtual retail,” said Ding-Voorhees.
But brands could have blind spots as well. Take the signature T-emblem ballet flats from Tory Burch as an example.
The American fashion brand already registered its trademarks in multiple fashion-related categories, but counterfeiters found a loophole nonetheless. The infringer registered the T-emblem under the “metal buckle decoration” category, then produced the T-emblem ballet flats separately from the shoe parts.
Representing Tory Burch, Ding-Voorhees and her team acted fast to invalidate the trademark and gain back the rights to its metal symbol.
“Brands must think outside the box, registering in a wide range of categories in China, maybe even face masks. Because use is not required, you want to preempt squatters in your core and adjacent products or services,” added Ding-Voorhees.
To prove copyright infringement in gray-zone areas, such as brand-related editorial content or social media layouts, brands can also register specific creative content with the CPCC.
“To prove substantial similarity and access to the original work is key,” said Ding-Voorhees. “Creators can provide evidence to prove that the copycat had or could have access to its creative content, such as the infringer was found to be a follower of the creators’ Instagram account,” she said. “Even though evidence gained by using VPN will likely be challenged in China, the IP practitioners in China usually file such proof anyways, to show that it’s not impossible to gain access to the original content.”
Other creative elements, such as embroidery or print design, are usually easily protected. “Artistic creation such as unique pattern designs or artistic elements that are separable from the underlying garment can be protected by copyright law in China,” said Ding-Voorhees. “But the overall garment, including its shape, structure and cutting, is not protectable under the current Chinese copyright law. They are viewed as ‘functional’ and are harder to pass the ‘separation test.'”
Such was the case in the Comme Moi and Yiner Fashion Group case.
In 2019, Comme Moi founder, the Chinese model Lu Yan, accused Yiner Fashion Group’s multiple brands of copying three Comme Moi designs.
In 2021, Pudong New Area People’s Court of Shanghai ruled that the alledged Yiner copies, which included an asymmetrical white sleeveless top with exposed seam details and a similar style in black, did not pass the “seperation test,” thus did not constitute an act of copyright infringement.
Comme Moi was ordered to apologize on social media and pay Yiner a 300 million renminbi, or $41 million, fine for the company’s economic losses and reasonable expenses.