The Kensington Swan IP Team recommend that anyone manufacturing or selling goods in China, or considering doing so, file their trade marks and Chinese language versions of their trade marks in China prior to marketing their brand in China or entering into discussions with Chinese manufacturers or distributors.
Trade mark registration is only the first step for protection of brands applied to goods that are manufactured or sold in China. It should always be supported by contractual arrangements with Chinese manufacturers and distributors and an enforcement strategy to guard against infringement of your brand in China.
First to file system
As in many Asian countries, protection for trade marks in China operates on a ‘first to file’ system. Unlike common law countries such as New Zealand and Australia, prior use of the trade mark generally gives no rights. In China the first person who applies to register a trade mark will generally be granted a registration.
If you are already manufacturing in China and have not registered your trade mark we recommend that you do so now. If you are considering manufacturing in China we recommend you apply to register your trade marks before discussing your brand with Chinese manufacturers or distributors.
If you do not register your trade marks in China, a third party could do so and prevent you from manufacturing and selling goods bearing the trade mark in China. Even if you only intend manufacturing in China, not selling in this market, it is important to protect your mark. Even the manufacture of goods in China under a registered trade mark for export only, but without the consent of the Chinese trade mark owner, will amount to trade mark infringement.
The practical effect of this regime is that unscrupulous traders have the opportunity to register other parties’ brands in China, and then hold the genuine brand owners to ransom, demanding substantial amounts of money to hand over the registrations.
In some cases trade marks that are considered ‘well known’ are given some recognition in China. However, the trade marks must be well known in China not New Zealand or other markets.
The best protection is a Chinese trade mark registration.
Chinese language version
If you are selling goods in the Chinese market, we recommend you consider filing a translation or transliteration of your trade mark as well as the English version. English is not widely used in China and if you do not protect a Chinese version of your mark a third party could register a translation or transliteration of your mark, and then prevent you from using this.