Why protect trade marks in China?

With so many brand owners conducting business in China it is imperative to consider protecting your trade mark in that country.  Brand identity and its protection is critical for the success of any business. This is of particular importance in China where, if you do not register your trade mark, someone is almost certain to attempt to register your trade mark without your permission.  If you have not taken the necessary steps to protect your brand and trade mark in China, you will not be able to prevent this situation.

It is also recommended to file an application to register a mark which includes verbal elements in Chinese letters (Hanzi) as well as in Roman letters, in order to benefit from a protection of both marks. Since the visual, phonetic and conceptual aspects of a trade mark are protected, having a trade marks registered in Roman letters would not necessarily guarantee protection of the trade mark in Hanzi and vice versa.

Can I rely on unregistered trade mark rights?

The trade mark system in China is a first-to-file system. This means that unlike in Ireland and the UK, it does not recognise unregistered trade mark rights. So, if you wish to have your trade mark protected in China you must register your trade marks there. Without such registration a third party can register your trade mark and therefore prevent you from using your own trade mark in China. This is true even if you are not conducting any sales in China. Even if you are simply manufacturing your products in China, a third party can (and probably will) apply to register your trade mark and then be in a position to prevent you from exporting/importing anything from China with that trade mark on it, unless you pay a licensing fee. This is a common occurrence.

Therefore, it is imperative that you register your trade mark or service mark in China before someone else beats you to it and before you first start using your trade mark in China. If you know you will be using your trade mark in China in the near future or you intend to have your product manufactured in China there is no benefit in waiting – other than cost delay.

Protect your rights

The first to file an application in China for a particular trade mark is awarded priority to that trade mark.  So, if you are planning to sell products or services in China or to simply manufacture your products there, there are real benefits to going ahead and registering the trade marks that identify these goods and services right away.

If you are thinking about registering your Trade Mark in China, please contact us at mail@maclachlan.ie and we will be able to assist you.