Earlier this week I had a really interesting conversation with a contact of mine about how best to protect his organisation's brand in China, prompted by new opportunities to do business there. I ended up sending him a copy of this article from Raconteur, which very neatly explains how Chinese trade mark law has caught out so many big names (including Apple, Pfizer and Michael Jordan) – and I thought it was worth sharing more widely.
The key almost always seems to be about timing - unlike most Western trade mark systems (which seek to protect the rights of those who first use a mark), Chinese law provides for a 'first to file' policy on trade mark registration. This means that unless you apply to register your brand (and any variations on it that you might wish to use in China, e.g. your brand in Mandarin Chinese characters or Pinyin – the Chinese name for your brand spelled out using the Latin alphabet) as a trade mark in China before anyone else, you could find that you are effectively unable to use your own brand in China because doing so would infringe someone else's legitimate trade mark rights.
Changes in Chinese trade mark law brought in back in 2014 sought to crack down on 'bad faith' trade mark registrations, by introducing a requirement that trade marks are registered and used with honesty and integrity. However, the risks of so-called 'trade mark squatting' and counterfeiting continue to be high, and while the 'first to file' system remains in place brand owners will often find it hard to do much about it if someone else has registered their trade mark first.
Whatever the future for Chinese trade mark law, our advice remains the same – file early! If there's even a possibility that you might wish to trade or launch a new brand in China in the future, it's worth seeking advice on whether you should apply for Chinese trade marks. Doing so now might save you a massive headache (and/or bill) further down the line!
If you would like any advice on protecting your brand in China, please get in touch.
Like other forms of intellectual property theft, trademark infringement remains a major concern for international firms operating in China. And yet it has historically been hugely difficult to seek legal redress in the country’s courts.