In China, the right owner of the design of a product has several options to protect its IP rights: design patent, copyright, trade dress, etc. Among other IP rights, design patent has obvious advantages to enforce in China: strong right with low level of evidence requirements, and more options to enforce.

I. Conditions and timeline of Design Patent and other IP rights

For design patent, novelty is a must. China adopts absolute novelty for all kinds of patents (invention, utility model, and design patent). The right owner should file design patent application before the specific design of product is open to the public worldwide. Generally, it will take around 5 months to obtain design patent certificate from CNIPA. For some special design patents which needs to accelerate or delay examination, per the application of the applicant, design patents can be granted in around two months (accelerated) or delayed for 36 months the longest. In China, the protection period of design patent is 15 years from the filing date.

For copyright, creativity is a must. China is one of the members of Burnie Convention, Thus, copyright can be automatically protected from the date when the work is finished. However, it is recommended that the right owner files copyright application in time, to smooth the enforcement proceedings such as online complaints, administrative complaints, trademark dispute cases, or civil lawsuit. If the right owner believes its design of product is an applied art, or a fine art, it can file copyright registration before the China Copyright Protection Center (CCPC). Generally, it will take around 2 months to obtain the copyright certification from CCPC. In China, take corporate work for example, the protection term is 50 years for the work of fine art and 25 years for the work of applied art.

For trade dress, there is no way to register this kind of IP right in China. Trade dress is protected under the Anti-unfair Competition Law as “distinctive packaging or decoration of goods with certain influence” (hereinafter referred to as “trade dress”) stipulated by Article 6.1 of the Anti-unfair Competition Law. In order to establish the right of trade dress, the right owner bears a heavy burden ship to collect sufficient evidence proving its long-term use and extensive promotion of the goods with specific trade dress, and the trade dress had obtained high reputation and distinctiveness to indicate source of goods. There is no specific protection period for trade dress. As long as the right owner can prove it enjoys the right of trade dress, this IP right can be enforced.

2. Brief Comparison on Design Patent and other relevant IP rights

3. Conclusion

In comparison with other IP rights such as copyright and trade dress, design patent has obvious advantages to enforce in China: strong right with low level of evidence requirements to establish right basis, and more options to enforce. It has been proven that the legal cost for enforce a design patent through civil lawsuit is significantly less than enforce the right of a trade dress, and the chance of success of design patent infringement is more predictable than trade dress infringement.

Therefore, for valuable new designs of a product which will be sold/manufactured in China, it is recommended that the right owner files design patent applications in time (before open to the public worldwide, to avoid the risks of prior publication, which will cause the design patent vulnerable to invalidation).

Author: Nancy Qu