Luxury brands should stop moaning about copyright infringement in China and simply ensure they do not drop a stitch when protecting their products, a leading lawyer advised yesterday. Paolo Beconcini -- a consultant lawyer with the Beijing office of San Francisco-based law firm Caroll Burdick -- said that while intellectual property issues remain a problem in China, the jurisdiction is not as completely lawless as often perceived in the west. “Infringement is not as bad as many make out,” Beconcini told the third annual Luxury Law Summit in London yesterday. “IP in China is a game and there are rules to play by.” According to the IP litigation specialist, “trademarks are often stolen in China because western luxury brand companies simply forget to file them with the appropriate local authorities. And western companies don’t know enough about Chinese laws”.

IP courts

He pointed to the creation of three IP courts in China -- in Beijing, Shanghai and Guangzhou – as a positive sign that the local authorities are attempting to crack down on theft and infringement. The courts have jurisdiction over the cases in their respective cities – but in addition, the Guangzhou Intellectual Property Court takes responsibility for the entire Guangdong province.“They know what they are doing,” Beconcini told summit delegates, “but the problem is they are woefully understaffed and over worked.”

First-to-file rule

Key for western luxury brand manufacturers to bear in mind is China’s first-to-file IP rule. According to China’s Ministry of Commerce, the first applicant to apply for registration of a mark pre-empts all other later applications for the same mark in the same class. If two or more applications are filed for the same mark in the same class on the same day, the trademark   used first is accepted. Crucially, the ministry points out: “Where an application to register a mark has been rejected due to its identity or similarity to a previously registered mark, evidence of prior use will not be helpful for the purpose of challenging the registration, unless the mark is proved to be ‘well-known’ under the law.”

Luxury Law Summit

More than 250 delegates attended the Luxury Law Summit, which was organised by the Global Legal Post for the third year in a row.