After Brexit, what kind of changes will happen to the IP system and the related programs, rules and laws?
I think that it’s a very important point to note that there will be no immediate change to the IP system. The UK is very much continuing its business as usual in relation to the granting, administering and enforcing of IP rights. Of course, as the UK moves through the process of exiting EU, there will be an effect on those rights that derive from or are a product of harmonisation of EU rights. The IPO is therefore working very hard with users and consumers of IP rights as well as colleagues in other government departments to develop our response to the required changes to ensure the UK IP system continues to be one of the best in the world.
We are clear that the UK will still be the same forward thinking and globally facing country that it has always been and we will have an IP system that is commensurate with that. We are therefore working hard to provide an IP system when we leave the EU that will be just as effective for business and users alike.
What is your general impression of the IP system of China?
That’s a very timely question. I just returned from China and Chinese judges and the officials visit this week in London1. The Chinese IP system is very current in my mind. Our visit to China covered 3 cities and all elements of IP ranging from meetings with Customs officers at a major port, to visiting the SIPO external examination center in Chengdu, and Q: A: Q: participating as country of honor at an NCAC International copyright Expo in Guangzhou.This demonstrated the huge scale of IP rights granting in China across the whole country and showed the real importance of IP to China as a global trading, manufacturing and innovating country. We saw that China takes IP very seriously and its systems and processes are becoming increasingly sophisticated. This is important both for Chinese domestic customers and users and for the global brands operating and working within China. We had very good detailed discussions with our counterparts on a wide range of global IP issues. It highlighted the incredible advances that the Chinese IP system has made in effectively just 30 years. Chinese IP bodies now receive and grant a huge number of applications for IP registration and the system is also increasingly used by international businesses.
What is your greatest concern relating to IP development in China?
I think the issue that concerns companies in the UK the most, is still the topic of bad faith applications for trade marks. I appreciate these applications are made for a variety of reasons but I think they are still found to be the biggest challenge to many companies. The other growing issue is that of e-commerce and the sale of counterfeit products online, the size of the Chinese market makes it a particular issue there. However, it is a part of a broader global challenge which needs to be tackled as a part of wider cross-border collaboration.
We know that the global environment is changing, this is reflected in both economics and politics, what kind of influence do you think that these changes will cause to the global IP system or the British IP system?
You are absolutely right. I think that increasing globalisation means that we will need to work together more with different countries. We have to be able to operate together and we have to be able to work together. I don’t think that means we have to have the same laws, but I think we do need to work towards the set of systems that are level and fair. These systems should allow equal access to enforcement mechanisms and rights granting services.
It’s not absolutely necessary to have a completely harmonised systems of laws, but I think we need to build upon a foundation based on a shared vision of collaboration and an understanding of the importance of IP protection for global trade.
I think that this global collaboration will be increasingly key for tackling online IP issues such as the counterfeit trade or illegal streaming and sharing of IP such as films or music.
Do you have your own anticipation for the IP system in the UK or around the world?
Well, I think the UK is a part of a global system. In the UK, we consider both the views of our consumers as well as our right holders so that it is a balanced and fair system. The UK has done a lot of work both in Europe and domestically to make sure the IP system is efficient, affordable and fair. A lot of effort has been made to ensure that people can access the system in the best way possible. So my anticipation for the UK system is that we will continue to provide a system which supports users of the system and promotes international trade. Brexit, of course, will provide challenges and we need to make sure that we continue to make our services accessible to the public. The UK often ranks in the top 3 or 4 countries in the world in various global innovation or IP indices. Maintaining that status, and to be the very best place for IP, is my biggest ambition.
There may be some confusion when a Chinese applicant wants to make an application for a trade mark in the UK because of the different systems, do you have any advice for these applicants? Or do you have any good suggestions to avoid misunderstanding the system?
Chinese applicants have two choices when seeking trademark protection in the UK. They can either apply for a UK national mark at the UK IPO, or currently for an EU trademark at the EUIPO which gives protection in all 28 EU member states. If they are seeking international trademark protection, they can file an application via the Madrid system which allows users to protect trademarks in up to 114 territories.
Companies should think carefully about which route to choose. For example, companies focusing on business only in the UK may prefer a UK national mark, whereas those with EU-wide business may prefer an EUTM rather than a large number of separate national marks.
In 2015, over 1,700 Chinese Q: A: companies applied for UK national marks, and over 4,000 for EUTMs. Roughly 45% of these applications were through the Madrid system, with the majority being direct applications. The UK’s excellent trade mark attorneys can represent you at both the UK IPO and the EUIPO.
At the UK IPO, we are proud of the quality and speed of our trade mark examination. Our examiners typically take under 10 working days to complete the first examination and, including the opposition period, a registered trade mark can be obtained in under four months.
A British attorney, can help Chinese applicants navigate the trade mark systems in the UK and Europe.
However, there are some differences in the UK that applicants from China may not be familiar with. For example,
a). The UK IPO only examines trade mark applications under absolute grounds. There is no examination under relative grounds, although the examiner does undertake a search of the UK, EU and Madrid trade mark registers as a part of the examination process. Where a search identifies potentially-conflicting earlier marks, the applicant is notified of their existence. If the applicant then chooses to proceed, the owners of the earlier marks are notified and may then oppose.
b). Bad-faith applies to both absolute and relative grounds. Absolute grounds bad faith objections are infrequent, but they can be raised where the IPO has genuine reasons to question the basis for submitting a trade mark application. Bad faith is more commonly used for opposing or cancelling a trademark. If an applicant faces an allegation of bad faith fails to respond to our notice of opposition or cancellation, then their application is automatically deemed to be withdrawn (this approach applies to all oppositions and cancellations, regardless of the grounds relied upon).
The delegation visit is a good chance for the IP practitioners to engage in discussions and learn more about promoting business. In your opinion, are there any good methods to promote British business in China or promote Chinese business in UK?
I think there are many ways to promote business and trade across the world. The UK government has international trade and investment specialists which work with the embassies and consulates in other countries, including China, to help promote UK companies abroad and provide advice and assistance. The UK IPO also has an attaché team in Beijing who provide specific IP advice and assistance. We provide a number of resources to support British companies trade abroad including fact sheets2 and specific company advice. These resources help British companies trading abroad, but also support Chinese companies interested in working in the UK. As I mentioned earlier, the UK ranks highly on global IP ranks and we are home to highly innovative universities and business which makes the UK a great place conduct research and development and to invest in IP.
IP information for businesses looking to work in China and those coming to the UK is available on our website at www.ipo.gov.uk. We hope these are helpful to businesses looking to work in both the UK and China and to supporting closer collaboration between our two countries.