Securing your brand in China advice: Effective IP protection and enforcement
05/12/2023
UKFT members can catch up on an exclusive seminar on brand protection and the enforcement of intellectual property (IP) rights in China, with Dan Plane from China-based IP consultancy SIPS Asia and Paul Alger MBE from UKFT.
Key takeaways for UK fashion and textile brands:
- China has a first-to-file trademark system so it’s important to register trademarks as early as possible to prevent others from registering your marks
- Due diligence on potential partners in China is critical to avoid issues like IP theft
- Having proper IP agreements and enforcement mechanisms with suppliers/partners can help prevent problems
- Monitoring the market and supply chain regularly is important to catch any IP issues early
- There are different options for enforcing IP in China through civil, administrative and criminal routes depending on the situation
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Drawing on over 20 years’ experience in private practice and as an in-house lawyer at Louis Vuitton managing their Asia-Pacific anti-counterfeiting program, Dan shared strategies and best practices for safeguarding your brand in China, explored the available tools for combating counterfeit goods and explained how to craft a cost-effective enforcement programme.
He provided an overview of the Chinese IP system, including trademarks, copyright, patents and domain names. He emphasised that China has a first-to-file trademark system. He discussed common IP infringement issues companies face in China, like trademark squatting, counterfeiting, and IP theft by suppliers or partners.
Dan stressed the importance of thorough due diligence on any potential partners in China to avoid IP problems. Companies should check for any history of IP infringement.
He recommended having proper IP agreements with clear enforcement mechanisms. Regular market monitoring both online and offline was highlighted as important to catch issues early. This includes monitoring customs seizures.
During the seminar with Paul Alger MBE, UKFT’s International Business Director, Dan covered options for enforcing IP in China through civil, administrative and criminal routes depending on the situation.
Other topics included protecting brand online, investigating counterfeiters and considerations for operating in other Asian markets.
The talk provided a wealth of practical advice for companies doing business in China to protect their IP.
About the Speakers
Paul Alger MBE, UKFT
As UKFT’s Director of International Business, Paul has worked with UK designers and manufacturers in the fashion and textile industry since 1989, representing the industry on a number of national committees and groups and awarded an MBE for services to Fashion and Exports in 2019.
In 2018, he was elected Chairman of Export Partners UK (a cross-sectoral not-for-profit organisation set up to encourage a joined up approach to UK exports, international trade and relations with government) and actively campaigns for better market access.
Dan Plane, SIPS
A China IP specialist for over 20 years focusing on both enforcement of rights – both in Asia and globally – and trademark prosecution. Dan has also served on the International Trademark Association’s (INTA) Anti-Counterfeiting and Parallel Imports Committees.
Before joining SIPS, Dan worked in Shanghai and Hong Kong with Baker McKenzie and Gide, and previously in-house, managing anti-counterfeiting programs throughout Asia for LVMH and in EMEA for Nokia.
Dan acts on behalf of a wide range of clients, including garment manufacturers, electronics and computer companies, pharmaceuticals companies, and luxury goods manufacturers. Of particular note is his wealth of experience in designing and managing regional intellectual property programs and IP security programs in supply chain and distribution contexts.