The IPR landscape for Swedish SMEs participating in trade fairs in

Hong Kong

Simon Cheetham 27 November 2014

Welcome to the webinar

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Milou Biesebroek & Berdine van Oosterhout China IPR SME Helpdesk

Webinar interaction tools

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Snapshot: Helpdesk services

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Today’s speaker

Name: Simon Cheetham Team Leader – China IPR SME Helpdesk Location: United Kingdom Speaker’s Bio: Simon Cheetham is the Team Leader of the China IPR SME Helpdesk. He is a China IPR Enforcement expert with over 30 years' experience in commercial investigations, due diligence and IPR enforcement in China and internationally. He has lived and worked in China and South-East Asia for over 17 years. He is also the Managing Director of ERINYES INTERNATIONAL LTD, a firm he founded to capitalise on his extensive experience of international investigations, loss prevention and enforcement work. He manages and directs the operations of the Company from Europe to the Far East.

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Agenda

1) Introduction to IP landscape in Hong

Kong and China

2) Dealing with Local Partners

3) Due Diligence

4) How to prepare for a Trade Fair

5) What to display and what not

6) How to protect your IP

7) Q&A

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IPR landscape in China

• IP protection relatively new concept • Evolving IP laws – undergoing

refinement • Bad faith registrations recognition • Copyright awareness • Trade Fairs – take care! • Patents – enshrined in 5 year plan • IPR laws maturing?

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IPR Landscape in Hong Kong

• Hong Kong's IP laws are separate & significantly different to Mainland China.

• No general registration system for copyright

• 2 types of patents granted in Hong Kong - standard & short-term patents

• Company names, business names & trade marks are regulated separately in Hong Kong

• Essential to secure registered

design protection for all registrable designs

• Trade secrets protected by contract or common law

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Dealing with local partners

• Use local business support groups • Get the right lawyer(s) from the start • Prepare to negotiate • Pre-agreement • Commitment from both sides • Minimise technical information release • References and due diligence • Meet the customers • Speak to other licensors/vendors • A good, tight agreement • Define the territory

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Helpdesk case study

Background • A Greek company trading olive oil products started

exporting their products to China through a Chinese company in 2007. Later the Greek company found that the Chinese company had, without their consent, applied for registration of the trademarks associated with the Greek olive oil products, not only for olive oil products but also for a whole series of food products. The issues raised by the Greek company included how to stop the registration process, how to protect their trademark and how to find a lawyer.

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Helpdesk Case Study

Helpdesk advice • Contact an experienced China trademark

lawyer to discuss their case. • Evaluate whether they can file an opposition

against the Chinese company’s trade mark registration.

• Register their trade marks in alternative product categories.

• Consider negotiating a trade mark buy-back with the Chinese company.

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Due diligence

• Do they have a genuine business? – You can check company registration records in HK & China for

legitimacy – Do payments go to the same company?

• Check their scope of business – Do they actually produce the product / provide the service they want

to sell to you? – Do not rely on their brochure / website; it’s essential to visit – Carry out an IP check

• Qualify the distributor / supplier – Reputable customer list – Evidence of actual business transactions – How many staff do they have / is there an organization chart

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Due diligence

• If manufacturing more detailed checks important – What machinery/equipment do they use – Can their equipment meet your specifications? – Do they have the capacity you need? – Will proprietary moulds be used – who owns the moulds / how are

they kept / what happens if you need to change manufacturer • Do they have the engineering & QA skills

– What quality controls do they have in place – If accredited ask for copy so you can verify later – Do you feel comfortable handing over specs/drawings that can be

copied? – Can you use different suppliers for different parts of product

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Helpdesk case study: Great idea, poorly executed…

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How to prepare for a Trade Fair

• Study list of exhibitors & identify potential infringers

• Obtain samples of infringing goods • Any IPR protection provided by

organizers during the fair? • Decide if an enclosed booth is required • Decide strategy to deal with infringers;

send out warning letter? • Prepare IPR kit proving ownership of

IPR in case needed for immediate action

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During a Trade Fair

• Walk the fair – collect evidence & make a list – Evidence might include brochures/samples/business cards – Make a note of what, when & where

• Consider proactive action - Lodge complaints at the Complaint Office • Screen visitors to enclosed booths if required • Be selective when giving out samples

After the Trade Fair • Follow-up on leads

– Visit websites, use 3rd party to order samples, check their IP • Take action – get advice on next steps

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Submitting complaint to Complaints Office at a trade fair

• Basic information of the suspected infringer • Grounds & evidence supporting the complaint • Evidence showing ownership of the IPR relied

upon, i.e. – Patent: patent certificate, granted version of

the patent, legal status of the patent (or receipt of payment of annuity fees)

– Trade mark: trade mark registration certificate – Copyright: documents proving ownership

• LoA/PoA in favour of the person/agent carrying out the complaint at the trade fair.

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What to display and what not..

• Display products you have registered IP rights for • Avoid displaying/giving away technical info • Be careful with displaying innovative elements of products if you may

need to file patent • Keep trade secrets secret • Consider give-aways/samples • Good idea to collect visitors’ cards

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How to protect your IP

• IP as an economic tool • Using contracts & agreements • Keeping it secret • Remember copyright is automatic

& free • Registering a brand is not costly • Make them pay – don’t give it

away!

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It’s about business – not IP

• Identify critical IPR relevant to your products & register them • Consider layered approach – overlapping protection is harder to defeat

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Q&A

Name: Simon Cheetham Team Leader – China IPR SME Helpdesk Location: United Kingdom

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PLAY the Serious Game

• Interactive training and learning tool • Common business scenarios to

experience doing business, protecting and enforcing IP in China

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Available online at: http://www.chinaiprhelpdesk.eu/en/serious-game/

Thank you

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