The battle is heating up in China as more and more foreign companies are manufacturing or having their goods manufactured there for export abroad. There are signs that certain drastic forms of relief (holding or delaying shipments at customs, seizures, injunctive relief) are being taken by Chinese authorities at the request of so-called “interested persons”. An “interested person” can be a person claiming to be the registered owner of a trade-mark in China that is identical to the trademark registered by the foreigner in its local market. That “interested person” can petition the Chinese authorities and allege that goods manufactured in China, even if destined only for sale abroad, infringe on its intellectual property rights in China.  

Recently, a company had a large shipment of goods manufactured in China held at Chinese customs pursuant to a complaint from the registered owner of a Chinese trade-mark who claimed that the goods, which were destined for Canada, infringed its Chinese trade-mark.  

While such measures remain rare, it appears that they could be the sign of a growing trend in China.
 
We recommend to our clients who do business in China, and/or import goods from China, to register all of their trade-marks in China in order (a) to protect themselves from such risks and (b) to be in a position to take measures in China against persons manufacturing infringing goods in China.

For more information, please contact Laurent Debrun at (514) 841-6502 or by e-mail at ldebrun@dwpv.com or Benoit Archambault at (514) 841-6470 in the  or by e-mail at barchambault@dwpv.com in the Montréal Office  or Matthew Gottlieb at (416) 863-5516 or by email at mgottlieb@dwpv.com in the Toronto office.

Davies Ward Phillips & Vineberg LLP, with over 235 lawyers, practises nationally and internationally from offices in Toronto, Montréal, New York and an affiliate in Paris and is consistently at the heart of the largest and most complex commercial and financial matters on behalf of its North American and overseas clients.

The information and comments herein are for the general information of the reader and are not intended as advice or opinions to be relied upon in relation to any particular circumstance. For particular applications of the law to specific situations, the reader should seek professional advice.