Intellectual Property Services for Chinese Businesses in the UK

There are many opportunities for Chinese businesses in the UK market, thanks to the strong trade relationship and cooperation between the two countries. When moving to the UK, businesses based in China will need to pay particular attention to intellectual property (IP), both because protections like trade marks and patents are jurisdictional, and because Chinese businesses often own large volumes of intangible IP assets.

High levels of innovation in China, particularly in the technology and manufacturing sectors, mean that national IP registrations continue to rise and that Chinese companies now own more IP than ever before. However, the regional nature of trade marks and patents - two of the most important types of IP protection - makes it necessary to apply for separate trade mark or patent registrations in each country or market a business wishes to trade in. This can be complicated if your business owns a large amount of intellectual property, holds a long-standing trade mark, or has a good reputation internationally before you move into the UK market.

There are several issues that are common to Chinese businesses entering the UK, whether or not they register their IP before they begin to trade. In such cases, the experts at JMW Solicitors are often called in to help. Thanks to our experience, we have become one of the foremost intellectual property law practices in the UK, and the number one choice for Chinese businesses seeking international trade mark registrations.

We are highly regarded and trusted by many Chinese businesses to manage, register, secure and defend their IP in the UK market. Here, our experts will explain how UK intellectual property law works, and detail the considerations that Chinese businesses must make to prevent issues from arising.

For advice or legal support in managing intellectual property, call JMW on 0345 872 6666, or fill in our online enquiry form and we will call you back at a time that is convenient for you.

How can Chinese businesses apply for UK IP protections?

Unlike in China, there is no separate authority to manage copyright, and no need for copyright recordal to prove ownership. Instead, the UK’s Intellectual Property Office (UKIPO), which is a counterpart to the China National Intellectual Property Administration (CNIPA), is responsible for managing copyright. Protections apply automatically upon the creation of a work. 

Applying for a trade mark in the UK works in much the same way as it does in China. You can apply directly to the UKIPO using the organisation’s online service. However, the service is not available in Mandarin Chinese, and there are several reasons why it is better to have a UK-based solicitor manage this responsibility on your behalf.

It is a legal requirement that the trade mark owner (or their representative) has a postal address in the UK, so hiring an intellectual property lawyer based in the country is one of the best ways to meet this obligation. Further, it can become difficult if a legal dispute or objection arises relating to your trade mark if you do not have legal representation based in the UK, and can cause delays throughout the process. There are several other challenges that commonly arise when Chinese businesses enter the UK market, as we have detailed below.

What IP challenges do Chinese businesses find in the UK?

Since the Trademark Law of the People's Republic of China was updated in 2019, British and Chinese intellectual property regulations have been more closely aligned than ever before, but there are still differences that Chinese organisations must be aware of.

For example, the UK has “passing off” laws that can be used to defend unregistered IP assets, while China does not have any common law protections for unregistered assets. However, the UK’s passing off laws can be extremely difficult to defend in court and it is always best to register your assets to benefit from the strongest legal protection. 

A trade mark application can give your competitors insights into your business plans - if it is rejected, this gives them a further advantage and an opportunity to catch up. For this reason, it is vitally important that trade mark applications are carefully vetted by legal professionals to ensure they have the best possible chance of being granted.

Communication

One of the biggest problems that can arise during trade mark disputes, objections or challenges is communication. The time difference between China Standard Time and British time zones is such that it is difficult for Chinese businesses to manage any urgent correspondence. In turn, this can delay negotiations and prolong difficult situations.

By working with a UK-based law firm, you can enjoy peace of mind that communications will be handled on time. We will work hard to understand your business objectives and maintain regular communication at every stage during a trade mark application, or at all times while managing your intellectual property. In this way, you can be certain that we will pursue your objectives while managing all communications on your behalf.

Trade mark standards

UK authorities like the IPO, the Department for International Trade and the British Embassy in Beijing have all expressed concerns about the prevalence of bad faith trade mark applications by Chinese businesses. The result is that even when applying for trade marks in good faith, you may face extra scrutiny.

The most important thing to remember is that to be eligible for trade mark registration, an intellectual property asset must have a unique and original character. Any mark that is too similar to an existing registration is at the risk of being rejected; further, using such a mark without a registration could be viewed as infringement.

Both of these circumstances can lead to expensive legal action, which in turn can cause costly delays and interfere with your business plans. These different trade mark standards in the UK also increase the risk that Chinese businesses may unintentionally infringe on an asset owned as a registered trade mark by another business.

With our searching and clearing services, you can give your trade mark application the best possible chance of success. We will search existing trade marks to determine whether your brand assets are at any risk of infringement, and advise you on how to best protect these assets. If necessary, we can also negotiate the purchase of trade marks so that you can start to trade or launch a product in the UK market with your brand identity intact and secure.

Trade mark categories

Trade mark categories in the UK differ from those in China, and as a result, there is a risk that your business will fail to fully protect its assets. The UK discourages defensive applications, where organisations register trade marks in categories that they do not intend to use, to prevent other businesses from applying in those categories. All of this can make it difficult to ensure that you protect your intellectual property in every category where you intend to use it.

Our detailed knowledge of UK trade mark categories, combined with the time we will invest to understand your business and its ambitions, can protect your intellectual property in every category you need and ensure that your business is able to fully commercialise its assets in the UK market.

How JMW Can Help

The expert team at JMW Solicitors has represented many Chinese businesses to successfully protect and commercialise their IP in the UK. We are trusted by many international businesses thanks to our experience, and we provide a comprehensive range of services, meaning that you can always be sure that we can manage your intellectual property requirements effectively.

Our services include:

• Preparing applications, registering and securing assets
• Searching and clearing
• Advice and guidance on IP strategy
• Defending assets against oppositions, invalidity proceedings or revocations
• Monitoring registrations to defend your trade marks or patents
• Commercialisation of IP, such as licensing, franchising, or selling assets

We will tailor our approach to your business’ individual needs, and ensure that we support your organisation’s objectives at all times with our IP management strategy. We have significant experience in supporting businesses of all sizes to move into international markets, and can provide any service you might need to maximise the value of your intellectual property assets.