China NNN Agreements: How to Get Them Properly Signed and Executed

How to execute a China NNN Agreement

This post is nothing more than as described in its title. It focuses on what you typically should do to by way of contract signing formalities for your China NNN Agreement. It answers this question we frequently get from our blog readers and from our own clients: What exact steps should I take to get a China NNN Agreement signed?

The below is the typical response from our China lawyers:

The next step is to send this bilingual agreement to the Chinese side for review. If the Chinese side accepts all terms (sometimes they will propose changes), the best way (for you) to proceed would be for you to go first. That is, you should sign, date and then submit the contract to the Chinese side. Then don’t do anything (do not send any confidential information s your product or your molds) until the Chinese side returns with a fully executed version, signed, dated and chopped. You are right that you will want to make sure the exhibit listing your confidential information is properly filled out and dated, signed and chopped by the Chinese side. And you want to make sure of this not only at the time of first execution but also every single time a new product item or a new mold item is entered onto the record. For your own protection, you will want to make sure you in the end hold on to at least one original, fully executed agreement.

Please note that though the above says “bilingual agreement,” the official portion of the agreement is strictly in Chinese. The English language portion is strictly a translation for the benefit/convenience of our clients. I am careful to make this distinction because nearly all of the contracts we draft call for Chinese as the official language and we never draft contracts where more than one language is the official language. For why this distinction is so crucial, I urge you to read Silly Rabbit, The Chinese Language Contract Is What Matter and Dual Language China Contracts Double Your Chance Of Disaster.

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China NNN Agreements: How to Get Them Properly Signed and Executed

China Copyrights: No, You Can’t Call It Fair Use

Formally, China’s copyright laws have been in line with those of the United States and other developed countries since China became a signatory to the Berne Convention in 1992 and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in 2001. But it’s hardly news that you can get a pirated copy of pretty much any movie, CD, or book in China with only a modicum of effort. Years ago you could find bootleg DVDs outside nearly every supermarket and mall in the country. Nowadays it’s more difficult to find such sellers, but not because of China’s efforts to curtail counterfeit goods; it’s because the market has moved to the Internet.

But as China’s homegrown media companies like Baidu, Alibaba, and Tencent continue to pay serious money for the rights to stream tv shows, movies, and other copyrighted material, more lawsuits are being filed in Chinese courts seeking to enforce China’s copyright law, and more official efforts are underway to reduce the amount of pirated material available in China. A (slightly) more subtle form of copyright infringement is still thriving, however: creative works that coopt key elements from copyrighted material, from storylines to characters to music cues and beyond. Television shows in China will make a few slight changes to a copyrighted format and then insist it is an entirely new creation, as with The Voice of China last year. It’s not always clearly a copyright dodge, either; the popular Chinese singing competition I Am a Singer (我是歌手) is an official licensee of a copyrighted  Korean format – or was, until the title and format were altered recently in the midst of China’s unofficial restrictions on Korean content. Presumably it is no longer considered a Korean-content show, which as a side benefit probably means the show cannot be held liable for copyright infringement.

Chinese manufacturers have long excelled at taking the key elements of an existing product and incorporating them into a “new” product. So it’s no surprise that the same thing happens in entertainment. It’s been happening for decades with the most famous story in China, the 16th century novel “Journey to the West,” which has been adapted into a movie or tv series dozens of times. We complain in America about the overwhelming number of sequels and superhero movies, but at least most of them have a different plot. This would be like having one of our greatest stories – you know, like Point Break – remade multiple times in different formats every year for forty years.

It’s important to understand, however, that Chinese law prohibits the unauthorized use of a copyrighted work, or elements thereof, unless such use falls under one of the twelve specific exceptions listed in Article 22 of China’s Copyright Law:

(1) personal use;

(2) “appropriate” quotation in order to introduce, comment on, or explain;

(3) media use to report current events;

(4) republishing or rebroadcasting of another media entity’s story;

(5) publishing or broadcasting a public speech;

(6) translation or reproduction of a scientific work solely for use in teaching or research;

(7) use by a government entity “to a justifiable extent for the purpose of fulfilling its official duties”;

(8) reproduction of a work in its collections by a library, museum, etc. for display or preservation purposes;

(9) a free live performance;

(10) copying, drawing, photographing or video-recording a public artwork;

(11) translation of a Chinese citizen’s work from Mandarin into a Chinese minority language, for distribution in China; and

(12) transliteration of a published work into braille for publication.

The above exceptions are similar to the American concept of “fair use,” a doctrine that allows for unlicensed use of copyrighted material under certain conditions.

Although not always interpreted consistently, China’s fair use exceptions are quite limited. When you’re watching a Chinese reality show and hear a dozen music cues lifted from American pop songs, that’s not fair use. When you’re watching a Chinese television show that seems exactly like Mad About You, that’s not fair use either. That leaves copyright infringement (the former) and legal licensing of a copyrighted format (the latter).

As the value of copyrighted material in China increases, it’s increasingly important to take a broader view of IP protection. Licensing TV shows to China is a big and growing business. Anti-piracy efforts are still important, but it’s even more important to have a properly drafted license agreement. And to take legal action when you find another media company using your copyrighted material. If you don’t protect your own IP, who will?

China Copyrights: No, You Can’t Call It Fair Use

How to Sell Your High Value Equipment to China

This is the first in an eventual series of posts I will do on the business and legal issues related to foreign companies selling high value equipment to Chinese companies. The behavior of Chinese companies in this area is quite uniform, and it is therefore possible for me to present a uniform approach to sales into China. Before moving to a detailed analysis, it will be best to step back and consider how Chinese companies view the process. Once the fundamental viewpoint of the Chinese side is understood, it is then much easier to determine how to craft an effective sales strategy for China.

Chinese companies purchased a fair amount of advanced equipment from foreign companies in the 90s. But these purchases slowed considerably as Chinese companies shifted their focus to manufacturing for the export market. However, these export oriented Chinese companies have recently started showing a renewed interest in purchasing advanced equipment from foreign manufacturers. That China is now Germany’s largest trading partner is good proof of this.

The reason Chinese companies are buying more advanced equipment from overseas is clear to anyone who visits Chinese factories. The simple truth is that much of the production equipment in these factories is old technology nearing the end of its useful life. The Chinese businesses that have made China the factory of the world have  pushed their manpower and outdated tools to the limit and for them to continue to compete in the world manufacturing market, technical upgrades are required. Chinese companies are mostly unable to innovate in this area on their own; so they are reluctantly making purchases from foreign entities.

Though the world has greatly changed since the 90s, the attitude of Chinese companies towards the purchase of foreign equipment has not. There are five basic beliefs that drove Chinese advanced equipment purchases back when I was working on them in the 1990s and those same five basic beliefs drive these purchases today. Once these beliefs are understood, Chinese behavior on these equipment transactions becomes easy to understand. Once you understand the basis for the behavior of your Chinese counterpart on these deals, you can design a program that can be successful in the Chinese market.

In entering into a sales agreement with a Chinese factory interested in buying your high value equipment, you should understand that the Chinese factory owner almost certainly holds the following five fundamental beliefs that will drive its behavior in the sale process:

1. Your price is unfairly high. The important thing to know is that the Chinese side believes your price is both too high and fundamentally unfair. The Chinese side views this as the legacy of foreign imperialism, designed to keep the Chinese down, always under the thumb of the foreign oppressor. This attitude is supported by the general ideology of the PRC government. Under this basic belief, the Chinese factory owner feels morally justified in working to avoid paying you the full price for the equipment.

To achieve this, the basic strategy of the Chinese side will be the following:

a. Insist on paying in installments, then not paying the last installment.

b. Insist on a major discount, in the range of 30% to 40%. This then becomes the new base price for the equipment.

c. After paying the discounted price for the first two units, insist on an additional discount for future purchases.

2. Training is not necessary. Any requirement for training the Chinese side in how to use your equipment is just another way for you to unfairly extract more money from the Chinese side. It is also a way to keep the Chinese side down by showing that the Chinese have something to learn from foreigners. The Chinese believe that operation of the equipment is governed by a simple magic pill. Foreign companies that insist on a training program are withholding access to the magic pill.

3. Proper equipment set-up is not necessary. Your requirement that the Chinese side retain you for proper equipment set-up is a waste of time and designed to shift blame for operational failure onto the Chinese side. The Chinese side believes the equipment should “just work.” For this reason, elaborate site set up and pre-operations testing should not be required. Just turn the key and go.

4. After sale support and maintenance is not required. Requirements from the foreign equipment supplier for such after-sale support is designed to do two things: unfairly extract more money from the Chinese side and keep the Chinese side employees ignorant about the true nature of how the equipment operates. That is, you are unfairly hiding the magic pill from them. In addition, the equipment should “just work,” with no need for after sale maintenance or support. Your requiring a service contract or related after-sale support is either your admitting that your equipment is fundamentally defective or your trying to unfairly milk more money from the Chinese side.

5. Your attempts to protect your IP is foreign oppression. Intellectual property protection that prevents the Chinese side from copying your equipment is just another form of foreign oppression. The Chinese side does not believe the design of your equipment is the result of years of hard work and R&D and it wants to be able to copy it so that it can be manufactured in China at a “fair” price.

This then means the Chinese side’s standard strategy will be to purchase as few units as possible and then use its initial purchase(s) to extract the “magic formula.” The strategy is to abandon future purchases and have clones of your equipment manufactured in China.

Obviously not all Chinese companies subscribe to all five of these beliefs and some Chinese companies do not subscribe to any of them. But most do and I know this from what they have told me (in Chinese), from what I have overheard (in Chinese) and from what I have read (in Chinese). I mention all this because foreign companies find this all hard to

How to Sell Your High Value Equipment to China

China Employment Compliance and Audits: THE New Big Thing

China is serious about improving the situation for its workers. I repeat, China is serious about improving the situation for its workers.

I feel the need to repeat this because many foreign companies doing business in China believe decreasing economic growth will lead the government to favor foreign employers. Wrong, wrong, wrong. Foreign employers do not protest; Chinese employees do, and the Chinese government values stability above nearly all else.

Our China lawyers are seeing this play out in the following ways:

• The Chinese government (especially the tax authorities) are relentlessly pursuing foreign companies with China employees but no business registered in China. This started picking up in early 2015 and it went into overdrive just a few months ago. For more on this, check out this Forbes article, China’s Tax Authorities Want You, along with our own two part series, Donald Trump and your China Business: Double Down, Ditch It or Die and Donald Trump and Your China Business: Double Down, Ditch It or Die, Part 2. One of the reasons for this crackdown the desire to force foreign companies to retain employees 100% within the law, so that these employees will have fast and easy legal recourse against their employers for labor and employment law violations.

• China”s government, courts and administrative bodies are getting tougher on foreign companies that do not comply with China’s labor and employment laws. Like pretty much everything else related China’s employment laws, the extent to which this is happening varies by location. See China Employment Law: Local and Not So Simple.

• China employers that violate China’s labor protection laws will be named “and shamed.” Employers are also getting graded on their compliance with China’s labor and employment laws. I explain what this means below.

Beginning earlier this year, China enacted Measures for Announcing Major Violations of Labor Security and the Measures for Credit Rating Evaluation of Enterprise Labor Security Compliance. These measures evidence the government’s seriousness regarding employment law compliance and they give the government new powers to ensure compliance. According to the Supreme People’s Court, new labor disputes accepted by the Chinese court system totaled 483,311 in 2015, up a whopping 25 percent from the previous year. And I have no doubt that these numbers have been rising in a straight line upward ever since. China employees are getting smarter and more proactive about enforcing their legal rights against their employers, especially as against foreign employers.

The new measures include publicizing “serious” employer violations in newspapers and magazines and on TV. These public announcements will include the employer’s name, address, and registration code, along with the full name of the legal representative or key person in charge and the exact violation and fines or other sanctions imposed. Just imagine what this will do for your company’s reputation and your ability to hire new employees. Will individuals who have been named and shamed want to leave China? Will they have to do so?

In addition to naming and shaming, employers will receive A, B or C grades based on their compliance in various areas, including the following:

• rules and regulations
• employment contracts
• misuse of third party hiring agencies (a/k/a labor dispatch services)
• child labor laws
• overtime and vacation compliance

Employer grades will eventually be shared with various Chinese government agencies, including (it is widely believed), taxing authorities. In other words, if your company scores a C on its labor compliance, it may find itself at risk in all sorts of seemingly unrelated areas (beyond just fines for labor law non-compliance), such as income tax or environmental compliance. We expect China’s biggest cities with large numbers of foreign employers will get out in front of employer inspections and enforcement first and early.

Your job (pun intended) as a China employer is to get out in front on compliance as well. The best way to do this is to have an independent audit conducted on your employer-employee situation. As recently as a year ago, our China lawyers were rarely asked about “employer audits,” but hardly a month goes by these days without such a discussion. Foreign employers in China are seeing what is going on around them and they are reading the news. They recognize that the Chinese government now realizes there is lots of money to be made by fining foreign companies for failing to comply with China’s employment laws, while improving employee/citizen satisfaction at the same time. Our best employer audit clients are those who have already been fined, sanctioned or sued for employer violations. Our second best employer audit clients are those who know of someone in their own industry who has already been fined,

China Employment Compliance and Audits: THE New Big Thing

China and Mexico: The Two Amigos? Part IV

In my first post, I discussed China’s efforts to build stronger economic ties with Mexico – and why Mexico should be clear-eyed about China’s motives. In my second post, I examined the current economic relationship between Mexico and China. In my third post, I explained why the economic relationship between China and Mexico has made so little progress. In this, my fourth and final post, I will look to the future and discuss how to improve the China-Mexico business relationship.

My first piece of advice is for Mexican companies to be realistic about what China wants and what China is truly prepared to do. Just because China offers itself as an alternative to Trump’s America doesn’t mean it is the right alternative, or even a good alternative. Every country has its own agenda and it would be foolish to think otherwise.

Beyond that, every Mexican company should ask itself if it is truly ready to do business with China, and every Chinese company should ask itself if it is truly ready to business with Mexico. It makes no sense to talk about strategic partnership without companies the right companies that are willing and able to profit from a reinvigorated relationship between the two countries. And in my company’s experience, there is a lot of work to be done on both sides, including the following:

• Companies must adopt corporate governance principles and incorporate due diligence into their everyday processes to ensure compliance with the other country’s laws and regulations.

• Mexican companies must make IP protection their top priority and register their copyrights, trademarks, and patents in China as soon as practicable. This advice applies whether they are directly operating in China or are merely operating in the US, Europe, or any other jurisdiction that would put them on the radar of a Chinese squatter.

• Executives must understand not just the relevant laws in the other country, but also the cultural mores and unwritten business rules – and the implications for their company. Mexican executives need to realize that they are both in charge of the Chinese operation and accountable for it. Similarly, Mexican companies should balance the obvious need to hire Chinese nationals with the need to retain personnel (probably expats) who “get” China but also understand Mexico’s business culture and are truly on the side of the Mexican company. This sort of cultural fluency is in many ways more important than language fluency.

• Mexican companies must move beyond the idea that they are direct competitors with their Chinese counterparts. Instead they should either engage in further specialization, or move up the value chain. Patents and trademarks and geographic indicators/appellations of origin can play a key role in differentiation. But being different only goes so far – if you don’t have a product Chinese consumers want, being different is irrelevant.

• Companies on both sides need the support of their respective government, as well as the counsel of qualified international lawyers. Many of the deals I see today have neither, but as the monetary value of the deals goes up, the rest will/must follow.

Almost all of the above address what private companies can do. But the Mexican government has a role, too. It needs to implement an effective economic agenda, and maintain progress toward North American integration.

An effective economic agenda involves more investment in trade intelligence and entering into trade and investment policy negotiations with China that are derived, as much as possible, from the political and ideological considerations that have characterized China’s relationship with many commodity-producing countries in our region. At the same time, Mexico needs to rise up the global value chain, and that requires investing in infrastructure, facilitating trade, and improving the quality of accreditation.

It may seem odd to talk about further North American integration against the backdrop of Trump’s rhetoric against NAFTA and against globalization. But China has long been the de facto 4th member of NAFTA and it’s silly to pretend otherwise. And given the enormously important economic ties among the NAFTA countries, a purely bilateral agreement (i.e., solely between China and Mexico or China and the US) seems increasingly unrealistic.

My company’s bottom line is that we cannot wait to see what Trump does or doesn’t do. Or for that matter, what China does or doesn’t do. China is not going to replace the US as Mexico’s largest and most important trading partner. Each Mexican company’s China strategy should be stand on its own terms. Mexican companies should expand into China because it makes sense to do so and because they think they can succeed there – not because they think China is going to replace the US as Mexico’s most important trading partner.

 

The above post is by Adrián Cisneros Aguilar. Adrian is the founder/CEO of Chevaya (驰亚), an Asia-Pacific internationalisation services company. Adrián has a Doctor of Laws from Shanghai Jiao Tong University and an LL.M. in International and Chinese Law from Wuhan University.

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China and Mexico: The Two Amigos? Part IV

China Manufacturing: Bad Contracts and Bad Times Lead to Bad Products

Not entirely sure why, but in the last couple weeks our China lawyers have seen a massive increase in emails and phone calls from North American companies seeking our help in dealing with defective products/quality control problems. In this post, I explain what you (and they) need to have in place to avoid these sorts of problems in the future, and to make it possible to resolve such problems should they occur. Our China attorneys also have been receiving an unusually high number of emails and phone calls from companies being pursued by Sinosure, and I will discuss how to deal with that in a future post.

My theory is that this slew of calls is due to two things. An increase in QC problems at China factories due to rising costs. Whenever costs rise for China factories quality problems rise as well, until such time as the China companies can increase their prices to their foreign buyers. This influx of bad product calls may also simply be due to the time of year; it may just be the end of 2016 hangover. I note that our last bit tick in these calls was in February 2016. What makes this year’s version so much more interesting for us anyway, is how many of these new matters involve Internet of Things products and how woefully unprepared these companies are to deal with these problems.

I am going to try to avoid getting all preachy here, but I truly do believe that all of these companies could have avoided their bad product problems had they had a good contract in place with their China product supplier. Only one of the companies that have contacted us so far this year had any contract at all with their China factory, and that one contract called for all disputes to be resolved in the U.S. Court of the American buyer, and as we have discussed constantly on here, that is 99.99% of the time a non-starter. In Four Common (And Somewhat Deadly) China Law Mistakes To Avoid, I briefly (for me anyway) gave a real life example as to why this is such a bad idea:

A lawyer calls us with an airtight $ 2 million dollar breach of contract lawsuit against a Chinese company. This lawyer had drafted a contract calling for disputes between her client and the Chinese counter-party to be resolved in Boston Federal Court and she had already sued the Chinese company in Boston and secured a default judgment against it. She was now seeking my law firm’s help in domesticating the judgment in China, and It was clear she expected us to jump at the opportunity to take the case on a contingency fee basis.

That is until we told her that China does not enforce U.S. judgments. Ever.

She then came up with the idea that we start all over by suing the Chinese company again in China. We had to tell her that could not work because the Chinese court would have two strong grounds for throwing out that lawsuit. First, improper jurisdiction because the contract clearly called for the lawsuit to be in Boston. Second, res judicata because the entire case had already been tried (and won) in Boston (the proper jurisdiction). I have no idea how she explained all this to her client.

American lawyers commonly assume that what makes sense for a domestic transaction necessarily also makes sense for an international transaction. Boston would have made sense in the above instance if the counter-party had been in Los Angeles, but the rules and the issues are different when doing business internationally.

If you check out this post, China Contracts that Work, you will see that what is needed for you to have a manufacturing contract that works is for that contract to be in Chinese with a provision calling for disputes to be resolved in a Chinese court under Chinese law. Your manufacturing contract should also contain a liquidated damages provision and a mold protection provision (so that the factory does not keep your molds if there is a dispute, and be properly chopped/sealed by the Chinese side. It is also critical that your contract be with the right Chinese company as Chinese companies are notorious for signing agreements with an essentially empty shell company, usually based in Hong Kong. If your contract satisfies all of these things, the odds of your having a manufacturing problem go way way down. And if you have such a contract and you do have a problem, your odds of being able to resolve it with your Chinese factory without having to contact a China law firm for legal assistance go way way up. And in those rare instances where you do need to engage a China attorney to assist, that attorney will be well positioned to resolve your problem relatively quickly.

One more thing. Whenever someone contacts our law firm with a problem with their factory, one of the first things we always ask them is whether they have secured China trademarks for their trade name and their brand and their logo. We then explain how common it is for Chinese factories (they actually have someone else do the filing for them) to go off and register YOUR brand name and YOUR logo as a trademark so that they can use this as leverage against you or so that they can keep making your product with your brand name and your logo and sell that product in any country in the world where you have not protected them with a trademark. Sadly, about half the time we are too late and the trademarks have already been registered to someone else, making it difficult or even impossible for the foreign buyer to continue having its products made in China. For more on this critical IP issue, check out When to Register your China Trademark. Ask Tesla and China: Do Just One Thing, Trademarks. So if you have not already registered your brand names and logos in China, you should do this IMMEDIATELY and you certainly should do so before you complain to anyone there.

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China Manufacturing: Bad Contracts and Bad Times Lead to Bad Products

Hiring Employees in China

Hiring employees in China (the right way) is almost as difficult as terminating them. If you do not do your due diligence on your new employees, you find yourself losing lawsuits.

Consider the following scenario, based on an actual case:

New Employer wanted to hire Employee. Employee was still working for Old Employer, but he assured New Employer that all he had to do to leave Old Employer was to give Old Employer 30 days written notice. Employee then informed New Employer that Old Employer was angry with him for having left his Old Employer and was demanding he pay Old Employer damages for the early contract termination, but because it had been 30 days since he had given Old Employer his notice, “there should be no problems.” Employee also proposed a “perfect solution” to New Employer: he would sign a letter of guarantee to New Employer stating that he (Employee) would be solely responsible for any damages payable to Old Employer and expressly providing that New Employer would not be liable for any such damages.

New Employer was in a rush to hire an employee with the Employee’s particular skill-set so New Employer went ahead and hired Employee right after Employee executed the guarantee letter. About a month after Employee started working for New Employer, Old Employer sued both Employee and New Employer. Employee and Old Employer had an education reimbursement agreement that required Old Employer pay a substantial amount of money for Employee’s extensive training in Europe, and Employee had agreed to a 5-year service period in return for this European training. Employee was nowhere near to completing his contracted-for five years of service when he left Old Employer to be hired by New Employer.

At trial, Old Employer was able to prove everything, including producing actual receipts for the training provided to Employee. The court deemed the education reimbursement agreement valid and found New Employer liable for the damages incurred by Employee’s breach of contract. In other words, New Employer had to pay for having failed to conduct due diligence on Employee before hiring him. Even if New Employer could pursue Employee for all the money it paid Old Employer, it still is itself on the hook for the liability and it still had to pay its own lawyers to defend against the lawsuit. It also took a public hit to its reputation.

This case (and various other cases) make clear the importance of ensuring that your China hires are not joining you with similar legal baggage. Non-compete agreements are the most common “baggage” of which you should be aware. There are plenty of other employee agreements that can be important as well, such as the education reimbursement agreement in the case above. We do not recommend our clients use private investigators to investigate their potential new hires as that is generally illegal in China. We instead advise they request their potential employees provide such agreements before making any hiring decisions and that they also check with the potential hire’s previous employer, after first securing the potential employee’s consent to do so. It is, of course, entirely at the discretion of the previous employer to provide or not provide information on the previous employee, but in our experience, they usually will. It also is a good idea always to check the proof of termination of employment relationship. If the potential employee does not have this proof or is taking too long to get it, there is probably a problem. The failure to get this proof quickly likely means the potential employee did something wrong or is subject to some sort of contractual restriction. And when there are red flags, you should consider not hiring that person.

It also makes sense to insert a provision in your employment contracts with new hires that makes clear that a condition of employment is that your new employee has no restrictions of any kind from its previous employment. Note though that for this sort of provision to be effective you must set a probation period, and not a super short one. Then if the employee fails to meet the conditions of employment, he or she can be terminated before the end of probation period. Just be sure you have a well-drafted employment contract, well-drafted Employer Rules and Regulations, and that you document everything. 

Slack off in making a new hire at your own peril.

Hiring Employees in China

China Trademarks: The Limits of Fame

A few days ago the invaluable China Film Insider ran a piece about how American cable powerhouse Home Box Office is trying to stop the Wuxi, China-based HBO Studio Restaurant & Bar from using the HBO name without permission. But this movie-themed restaurant has every right to its name. As of 2013, it has owned a trademark registration for “HBO” in Class 43 for restaurant services.

HBO is perhaps emboldened by the recent, well-publicized victories of Donald Trump and Michael Jordan, who triumphed after years attempting to wrest “their” trademarks away from trademark squatters. Or by the judicial interpretation released by the Supreme People’s Court last month describing how China was going to take a stricter stance against trademark squatters.

But even if the Trump and Jordan decisions are harbingers of a new trend in protecting well-known marks, brand owners like HBO need to understand the limits of such rulings. Michael Jordan and Donald Trump only won partial victories. The trademark squatters’ rights were only invalidated with respect to those products or services for which Jordan and Trump were already famous. For Jordan: sporting goods. For Trump: construction services. Notably, the decision by the Trademark Review and Adjudication Board (TRAB) that paved the way for Trump to register “TRUMP” for construction services left intact the trademark squatter’s right to use “TRUMP” for mining and drilling services. Because, presumably, Trump was unable to show that “TRUMP” was well-known for those services.

In the HBO Studio Restaurant matter, Home Box Office faces two big problems. First of all, HBO is not well-known in China in ANY context. Until 2014, when HBO signed a streaming deal with Tencent, the only place you could legally watch HBO in China was in high-end hotels that catered to foreigners. And HBO’s brand awareness in China hasn’t exactly taken off since then. A few months ago, Chinese actor Cao Jun, the star of the HBO Asia original production “Master of the Drunken Fist: Beggar So,” admitted to knowing very little about HBO. Frankly, HBO would have difficulty invalidating ANY trademark on the basis of being a well-known mark in China. But in this case, they have to climb an even steeper hill. They need to prove that the “HBO” name is well-known with respect to restaurant services. And that is almost certainly not going to happen. In the alternative, HBO could argue that the Wuxi restaurant’s trademark was filed in bad faith, but China has been unwilling to invalidate trademarks on this basis except in the case of marks filed by serial trademark squatters and former business partners.

Don’t get me wrong: this restaurant has shamelessly coopted the HBO name in their entertainment-themed Western restaurant, and the restaurant owner’s complaints on its Weibo account about being bullied for no reason by a big American company have the air of protesting too much. But HBO’s strategy is almost certain to fail, because the Wuxi restaurant has superior rights under Chinese trademark law.

It appears HBO has already been down this road before; they had filed an application on March 28, 2014 to cover Class 43 services (including restaurant services), but were rejected for everything but renting cooking equipment, renting drinking fountains, and renting non-theater, non-tv studios. The basis for the rejection is not publicly available, but it is almost certainly because the Wuxi restaurant had filed its trademark application first. I note that on June 6, 2016, HBO filed a new application for Class 43 services, apparently hoping for a different outcome on their second try. I wish them well, but am going to assume that they have a Plan B.

HBO’s better strategy would have been to quietly approach this restaurant and offer to buy the trademark. Maybe HBO already tried that and failed.

I took a quick look and there are dozens of registrations for “HBO” in China, covering all manner of goods and services. And most of them aren’t owned by Home Box Office. That’s a lot of invalidations and appeals to file. Good news for China IP lawyers, but not good news for HBO. Although HBO can take heart from one thing: HBO Studio Restaurant & Bar has a high rating on Dianping, the Chinese version of Yelp.

To reiterate: the recent trend in Chinese trademark jurisprudence to protect well-known marks is heartening, but only extends to those goods or services for which brands are already well-known. If you want to protect your mark for other goods and services, you need to file in a broader range of classes before anyone else.

China Trademarks: The Limits of Fame

China Trademark Lawyers and Timely Renewals

Don’t be late with your China IP renewals

Every so often one of our China IP lawyers will get an email from a foreign company (usually a North American or European or Australian company) whose China trademark registration (usually) or China design patent registration (sometimes) did not go as expected. And every so often, one of our China IP lawyers will discover that a trademark our new client paid to have filed in China was never filed. Not to mention the times foreign companies pay to have their trademarks registered in China, only to later learn that the whole thing was a complete scam. In an article entitled Is Your China Lawyer Real, I discussed fake China law firms:

We have many times represented companies that paid money to a Chinese “law firm” for registering a trademark in China or drafting a    manufacturing agreement or forming a WFOE, only to learn that they had instead paid money somebody who had set up a temporary website with the sole intention of bilking the unwary. I have never heard of a real Chinese lawyer doing this. The trick is knowing who is a real lawyer and who is not.

I then discussed the sort of due diligence you should undertake before hiring a China lawyer, or any other lawyer, for that matter.

As more foreign companies are getting to the point where they need to renew/extend their China IP, our China IP lawyers are getting an increasing number of emails involving trademarks or design patents that were filed properly ten or so years ago, but the attorneys/law firms that handled the original filing are no longer around to mind the store. The below email (with a few slight modifications to preclude any identification) is fairly typical of this new breed of problems with which we are having to deal:

Here is one that you may not have come across.

In 2006 I took out a trademark for a product we make through a law firm in Shanghai. It was a small office off Changle Lu and they were very helpful and seemed to know what they were doing. Today I had reason to check the validity of the trademark and noticed that it had expired. I don’t remember anyone talking about this and so rang the attorney’s office to check on what we should do about this. It turns out that the person I was dealing with left in 2009 and the owner of the firm died soon after. They were supposed to send out a renewal notice, which I am sure they did not. They say they did, but our address and phone numbers are unchanged and nobody has died either. It is just another one of those China things. I understand that I now have to go through a special approval process because I did not apply for renewal within six months before its expiration.

I was very new to China when I did this and was quite naive about this sort of thing, believing that I was in the hands of professionals before I realised that they are very thin on the ground here. Also we had yet to set up our systems in the office and so we did not have any automatic reminders popping up, so I accept that it is partly my own fault (but in 2006 I had much more pressing things to occupy my mind). Can you help us on this new go-round?

Fortunately, this particular company came to us in plenty of time to fairly easily remedy this minor misstep. But we are aware of other foreign companies that have lost or compromised their China IP protections by having missed IP filing deadlines.

Bottom Line: Choose your China IP counsel wisely and consider maintaining your own IP calendaring system as well. And don’t be late.

China Law Blog

China Trademark Lawyers and Timely Renewals

China Manufacturing Contracts: The Questions We Ask

When we first began drafting manufacturing agreements for clients outsourcing their manufacturing to China, one of our China lawyers would send the client a six page questionaire to tease out the client’s China manufacturing plans. But no matter how hard we tried, there were almost always important questions our client either did not understand or unable to answer. We quickly realized that dumping six pages of questions on our clients was too much, especially since a particular answer to one question might mean a few other questions had become irrelevant.

We met with legal tech people to see about using technology to simplifying the process but we soon determined that would hardly help at all. These are not the sort of contracts that can be automated. Rather these contracts require the China attorney working on the manufacturing agreement to be in constant “live contact” with the client to help the client determine what makes sense for its industry, its company, and its product. So we instead switched to a system where we ask questions in “waves.” When we get answers to the first wave, we review those answers and ask a second wave and we keep going until we have all the information we need to start drafting the contract. We then draft the contract in English for our client to review and then we draft it in Chinese as the official version, with an English language version as a translation for our client. See Get Your China Contracts Written In Chinese, Not Translated and How To Draft A Contract For China. This has also become our standard operating procedure for our China NNN Agreements and our China Product Development Agreements as well.

I thought of all this today while reviewing a client’s email response to the first wave of questions for its China manufacturing agreement. The answers made so much sense that drafting wave two of questions will be a breeze. I am going to share this first wave of questions because they should make for a good starting point for Western companies seeking to determine how to have their products manufactured in China. Note that even our first wave of questions is tailored to the specific client so a few of the below questions are not relevant to every industry, company or product.

This is ____________ from Harris Bricken. I will be drafting your manufacturing agreement for China. To kick off this project, I have some preliminary questions. I will have other more specific questions based on your answers.

1. I note from your website that you have an extensive product line. Which specific products from that line do you want this manufacturing agreement to cover?

2. Do you have a specific set of factories in China with which you are already working? Or do you want this manufacturing agreement to be used for new factories? Or both?

3. In what PRC region(s) are your factories located?

4. When you work with factories, do you set a specific product amount on an annual or other fixed basis? Or do you work on a per purchase order basis, with no fixed annual order amounts?

5. What is your pricing arrangement with the factories? Is there a set price fixed for a specific period? If there is a set price, how is that price level enforced?

6. What are your payment terms? Do you pay an initial deposit? When is the final payment made?

7. How do you provide for submission and maintenance of samples? I know that in your industry, products are normally made in reference to a physical sample, rather than to a drawing or CAD diagram or similar. What system do you use?

8. What is your system for inspection and quality control? Do you inspect during production? Prior to shipment? After you receive the products in the United States and in Europe? After delivery to your customer? What is the specific system for dealing with defective/non-conforming product discovered at any of these four points in the system?

9. Do you have a system for dealing with inspection and related specific safety standards in place in the U.S. and in Europe? For example, flammable fabrics, non-lead paints, small pieces on toys and related. If so, what is the division of responsibility between your company and the Chinese factory?

10. Do you have a system for dealing with the quantity of orders made over time? Since many of your products are seasonal in demand, do you have some form of scheduling system to ensure that the factory will have capacity to deliver your orders during peak seasons?

11. What is your procedure for packaging and shipping? What are the shipping terms? How is pricing linked to shipping terms? To where is the product shipped? To your warehouses in the U.S. and in Europe, or directly to your customers?

12. I understand that you distribute some of your products for sale in China. Have you considered how the China side of your operations might impact this agreement, if at all? If we can ignore the China entity/sales issue at this time, that is fine, but we should discuss this.

13. I understand that you have been having products manufactured in China for more than a decade. What specific problems have you encountered that you want your new manufacturing agreements to resolve?

If you would like to discuss any of these matters over the phone or by Skype, and I would be pleased to speak with you.

For more on what goes into China manufacturing agreements I urge you to check out Having Your Product Made In China: The Basics on Protecting It and You and the links within that post.

China Manufacturing Contracts: The Questions We Ask

Quick Question Friday, China Law Answers, Part XXXVIII

Because of this blog, our China lawyers get a fairly steady stream of China law questions from readers, mostly via emails but occasionally via blog comments as well. If we were to conduct research on all the questions we get asked and then comprehensively answer them, we would become overwhelmed. So what we usually do is provide a super fast general answer and, when it is easy to do so, a link or two to a blog post that may provide some additional guidance. We figure we might as well post some of these on here as well. On Fridays, like today.

I came across your blog while researching employment contracts in China. Is there a standard amount of notice employees are legally required to give their employer when breaking a contract in China, or does it depend on the company itself? Also if I am going to give less time than is legally required, is it standard to pay for those days to exit the contract professionally? And is it standard to give the full amount of time or even more?

You are asking essentially two questions. One is a social/employment/morale/reputational one and the other is a legal one. We don’t know the answer to the question of how much time you should give in your particular industry or locale (especially since we do not even know your industry or your locale), so we would urge you to ask around so as not to harm your future employment chances in China (and if yours is a small industry, perhaps worldwide as well). As for the legal side, it should be whatever the employment contract says, so long as the applicable national, provincial, or local laws do not override that, which any one or more of these very well might. I urge you to read our post, China Employment Law: Local and Not So Simple. Unlike in most countries, it is not uncommon for China employers to sue an employee who fails to provide the legally required notice for leaving, so it is generally a good idea either to give the full notice that is legally required, or reach a written agreement with your employer letting you off the hook (probably by your paying money) for not doing so.

 

China Law Blog

Quick Question Friday, China Law Answers, Part XXXVIII