[Jian Xu] Four courses of action for IP enforcement in China

Broadly, there are four courses of action available to intellectual property right holders (which is not necessarily mutually exclusive):

1. Administrative Action

(a) This is where an administrative body (usually the Local Intellectual Property Office (“Local IPO”) for design infringement or the Administration for Industry and Commerce (“AIC”) for trade mark infringement or the local Copyright Bureau for copyright infringement) takes direct action against the infringer. In effect, the petitioner would need to file with the administrative body a complaint against the infringer, establish the petitioner’s rights and provide evidence that the infringement will cause irreparable damage to the petitioner’s interests.


(b) The administrative body will then conduct a raid on the alleged infringer’s property, confiscating any alleged infringing products. If the administrative body is satisfied that there has been an infringement, it can then fine the infringer, seize/destroy the infringing goods, or even revoke its business licence. The advantage of this route is that it is relatively cost effective, quicker than civil proceedings, effective and the evidence collated can then be used in a civil action. The disadvantage to this is that the claimant will not receive damages.

2. Customs Action

It’s worthwhile recording the petitioner’s design rights centrally with Chinese Customs in Beijing, so that Customs can monitor shipments and inform you if they discover potentially infringing goods. Educating the Customs officials is equally important, so the petitioner will need to notify Customs with as much information as possible, such as the names of the counterfeiters/traders, their logistics, characteristics of counterfeit products, etc. Customs has the power to seize and destroy the infringing goods once infringement has been established.

3. Civil Action

Trial: A trial in China is similar to that in the UK. In all likelihood, a trial will take between 6 to 12 months and, at the end, you may be awarded an injunction and damages (or account of profits is awarded). The pleading process is less regimented, due to there being no disclosure and a limited use of experts.

4. Criminal Action

This type of action is available to the Public Security Bureau, allowing them to bring a criminal action against the infringing parties. A criminal action is an alternative to administrative action and civil action and has the biggest deterrent value, but is usually reserved for high-profile counterfeit cases.