Intellectual property protection in China – AmCham trademarks

intellectual property protectionBetter intellectual property protection for firms from the United States doing business in China has been a key issue in bilateral trade negotiations ever since Bill Clinton was president.

The US-born lawyer Edward Lehman is suing the American Chamber of Commerce in China. He claims they stole three “AmCham” trademarks he first registered back in 1998 in the name of the American Club of Beijing, a non-profit organisation incorporated in Pennsylvania. The American Chamber of Commerce in China disputes Lehman’s claim.

The American Chamber of Commerce in China is a Chinese-registered entity that represents more than 700 American businesses including the likes of Boeing and Microsoft, and has constantly called for greater access and a level playing field for US companies doing business in China.

William Rosoff, the general counsel for the American Chamber of Commerce in China, denies that Lehman ever owned the trademarks. He registered it with the name of the American Club, but he didn’t own the American Club. When you register a name that is not yours, that has consequences,” he said.

Records at the Chinese Trademark Office of the National Intellectual Property Administration indicate there are 67 “AmCham” trademark records scattered throughout its system, with the three earliest filed by Lehman, now registered to the American Chamber of Commerce in China.

There are also dozens of applications for the American Club of Beijing made in 2009, when the dispute between the two sides began, labelled “void” as a result of the opposition by the lobbying group.

The ongoing 10-year feud reflects the complexity of intellectual property protection in general, and also the evolution of the Chinese system to protect rights over the last decade.

The Chaoyang District People’s Court in Beijing made a civil judgment on December 20, 2018, ruling that the “civil act of transferring registered trademarks No. 1309818, No. 1319892 and No. 1315487 by the Defendant Carole E. Bowers to the Defendant the American Chamber of Commerce in PRC is hereby determined as void”.

But it also called for the two parties to solve their dispute between themselves, as “the subsequent treatment involves administrative organs”. The court, in this case, could not order the American Chamber of Commerce in China to transfer the trademarks back to the American Club, meaning the two parties must seek alternative resolution.

The fact that Lehman was able to obtain a hearing in a Chinese courts against a well-connected institution suggests improvements in China’s intellectual property protection process. The American Club in Beijing have also lodged a damages lawsuit in Pennsylvania against the American Chamber of Commerce in China, according to Lehman.

This was just one of more than 300,000 intellectual property cases that Chinese courts at different levels handles each year.

Beijing insists that it has taken extensive efforts to address overseas concerns by cracking down on infringements, aiming to strengthen protection for the sake of its own innovation-based development.

The country established specialized intellectual property courts in the largest cities of Beijing, Shanghai, and Guangzhou in 2014, and the Supreme High Court started a specialized court in 2019 to hear technically complicated cases.

China’s legislature also passed a new foreign investment law in March which contained special clauses forbidding forced technology transfer and enhancing intellectual property protection.

Source: South China Morning Post