Legal IQ spoke with Paul Ranjard from the European Chamber of Commerce to provide insight into the IP relations between the EU and China. Read the full interview here! *This is an excerpt* To download the full ebook featuring insights from 10 industry experts, click on this link: http://www.patentcongress.com/mediacenter?utm_source=slideshare&utm_medium=social&utm_campaign=-external-social&utm_term=resourcecenter&utm_content=text&mac=19724.006_slideshare&disc=19724.006_s

2. EU & China : An international
perspective on current practises
What are the most common IP problems which
companies face in China?
...even though the revised
Trademark Law contains new
provisions that aim to make the
opposition easier,it is still difficult
to establish bad faith.
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WWW.PATENTCONGRESS.COM
Paul Ranjard,from the European Chamber of Commerce provides
insight on the current relationship between EU and China.
Ramya Nair
IP problems can vary immensely across different
sectors.The most common,or widespread
problem which companies have to face,irrelevant
of their sector or origin is probably the phenomena
of bad faith trademark applications,filed in China
by Chinese individuals and companies.It is more
and more frequent,for a famous foreign brand,to
find very similar trademarks being published by the
trademark office and having to go through the
expense of initiating opposition procedures.The
cause can probably be found in the staggering
number of trademark applications.Almost 3 million
trademarks were filed in 2015.Filing is getting easier
and cheaper (some new business models even
offer free of charge filing services).The (externalized)
examination service of the Trademark Office,who is
under time pressure (9 months maximum),has no
time to conduct a proper ex officio search for prior
rights.And,even though the revised Trademark Law
contains new provisions that aim to make the
opposition easier,it is still difficult to establish bad
faith.So far,the Trademark Office seems ready to
invoke the new article 7 (principle of good faith) as
a legal ground for refusing the registration of such
trademark applications.Still,companies need to be
very watchful and incur significant expenses.
In what ways does the concern about IP
enforcement affect company strategy and
operations in China?
RN
Looking at the results of the Business Confidence
Survey which the European Chamber of Commerce
runs on a yearly basis,IP protection per se has not
been specifically mentioned by European
companies as an obstacle to their decisions to invest
and operate in China in recent years.Companies
refer generally to market access restrictions,which
may however be incidental to innovation related
policies,technology transfer rules,investment
requirements,protection of IP in cases of anti-
monopoly cases.It is therefore hard to say
nonetheless that IP protection directly affects
business between China and foreign countries.
PR
Paul Ranjard
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3. WWW.PATENTCONGRESS.COM
In what ways do IP laws and regulations in China
reflect international standards?
WWW.PATENTCONGRESS.COM
RN
The principles of IP protection are basically the same
as in developed countries.These laws were among
the first to be enacted,after the open door policy
was launched in the early eighties.It was necessary
to protect foreign IP in order to invite investment.
There have been several waves of revisions of the
IP legal framework since.The trademark law for
instance was revised for the third time in 2013 and
the revision of the patent law and the copyright law
are ongoing.This said,what is quite different is the
variety of enforcement procedures.The so called
“double track”system,which allows an IP owner to
chose between a rapid and cheap administrative
enforcement and a more sophisticated and onerous
civil procedure (not to mention criminal actions and
customs seizures) is certainly a unique characteristic
of the overall protection system in China.
Are there any procedural barriers that hinder
companies’efforts to protect IP in China?
Procedure is the main issue.Access to justice (civil
courts) is not easy for foreign companies.They need
to submit notarized and legalized powers of
attorneys,which sometimes can be problematic,
when actions need to be taken rapidly.Evidence
originating from foreign countries also need to go
through the same notarization and legalization
procedure,which is time consuming and expensive.
The outcome of civil procedure is often difficult to
predict,given a lack of transparency in the process.
This being said,it is fair to say that China is making
progress and paying special attention to the
improvement of the enforcement procedures.An
RN
overall judicial reform is being implemented,the
most visible part of which being the setting up,in
2014,of three specialized IP Courts in Beijing,Shang-
hai and Guangzhou.Furthermore,the Supreme
People’s Court has created a centre in Beijing which
is focusing on the role of case law,a move that is
bound to progressively bring China in line with inter-
national practice.
The coexistence of administrative and civil enforce-
ment procedures may be considered as an advan-
tage because of the reasons mentioned above,but
this advantage has its limits.A full enforcement
procedure should not only aim at stopping the
infringement and imposing a penalty to deter the
infringer from repeating,but it should also aim at
repairing the prejudice suffered by the IP owner.And
this,the administrative enforcement route cannot
do.It has been suggested that both systems should
be combined.It should be possible to collect evi-
dence through the administrative way and continue
the case in court.A procedural“bridge”would be
welcome.
Past and future improvements are only possible
if there is an open dialogue.Last year,the EU and
China celebrated the 10th anniversary of the EU-
China IP Dialogue Mechanism.Both reaffirmed that
cooperation in the field of IPR protection remains
an important aspect of bilateral relations.In 2013,
the EU and China launched IP Key (www.ipkey.org)
which focuses on facilitating the development of an
intellectual property rights framework in China that
is increasingly effective,fair,transparent,and based
up international best practices.It also provides a
platform for cooperation between EU and Chinese
ministries,agencies,courts and a wider community
of stakeholder to create an IP landscape that benefits
both Chinese and EU industry operating in China.
PR
PR
The outcome of civil procedure is
often difficult to predict,given a lack
of transparency in the process.This
being said,it is fair to say that
China is making progress...
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4. WWW.PATENTCONGRESS.COM
What type of differences should companies within
the EU recognize when considering the way China’s
legal framework treats ownership of improvements
WWW.PATENTCONGRESS.COM
The parties to a cross-border technology transfer
agreement have less contractual autonomy than the
parties to a domestic technology transfer contract,
even if the technology is the same.They are not
allowed to freely negotiate clauses concerning the
ownership of subsequent developments or the liabil-
ity for infringement of third parties rights,which the
transferee might commit through using the tech-
nology.These restrictions,stipulated in 2001,were
deemed necessary at the time but are no longer
justified and,on the contrary,constitute an obstacle
to the free flow of technology.
Note on the contributor:
RN
PR
Paul Ranjard
Paul Ranjard is a French lawyer who has
been based in China since 1997.He
graduated in 1969 from the Paris Law
School and joined the Paris Bar in 1972.
Apart from his general practice mainly as a
commercial law litigator,Mr.Ranjard has
progressively developed a Chinese related affairs
practice. In September,1997,he moved to Beijing.
Since that date,Mr.Ranjard has devoted most of his
time to IPR related cases,acting on behalf of French
companies to help protect their intellectual property
rights,as well as representing the French
association Unifab,and chairing the IPR Working
Group of the European Chamber of Commerce.Now,
he is of counsel to WAN HUI DA.
Paul Ranjard is an active speaker at academic
seminars and international conferences.He is the
co-author of the article“Actions Speak Louder than
Words”(Managing Intellectual Property / China IP
Focus 2007) and“Relative Grounds of Refusal in
China & EU”(MIP / China IP Focus 2008).
Who will I meet ?
IP Manager
Head of Patents (Directors, Managers, VPs)
Patent Specialist
Patent Portfolio Manager
Patent Attorney / Counsel
Head of IP Policy, Head of IP External
Affairs. IP Strategy, Head of Patents
Operations
Head of IP / IPR (Directors, Managers, VPs)
Head of Licensing / Licenses (Directors,
Managers , VPs)
Litigation Counsel
Associate GC, Litigation
VP, Litigation
Head, Litigation
General Counsel
VP Legal
Director, Legal
Chief Legal Officer
Director, Dispute Resolution
IPR Specialist (Directors, Managers, VPs)
Head of Legal, In-house Counsel (Directors,
Managers, VPs)
Head of Litigation, Head of Patent
Litigation
Patent Attorney / Counsel Partner
Managing Partner
Over 180 expected attendees from job titles
including:
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