24 August 2018

China in your hands? Should you be registering your brand names in China?

If you are:
• manufacturing products in China
• selling products in China
• intending on expanding your business or outsourcing to China
• attending Chinese trade shows

then you could be seriously putting your business at risk if you don’t register your key brand names as trade marks in China.

Why the urgency?
China operates a ‘first-to-file’ trade mark system. This means trade mark rights are granted to the first person to apply for them, whether they have used the trade mark or not. This is how Apple lost a trademark fight against a Chinese company using the name IPHONE on handbags and other leather goods and had to pay $60m to settle a dispute over the right to use the iPad name in China.

Unauthorised registrations by Chinese nationals – the highest form of flattery?
Whilst China has continued to show considerable efforts in the past few years to improve the playing field, a culture of registrations made by Chinese nationals to piggy back on a well-known brand’s reputation, and applications made (with no intention of use) to later sell back to the rightful owner (at a significantly inflated price), still remains the biggest business complaint our clients raise with the British Embassy. It’s more common in consumer retail, but it can affect any industry.

How do I apply for a Chinese trade mark?

Applications in China need the experience of a local attorney. The application process is different to filing an application in the UK or EU, and to avoid mishap, issues around local language translation should to be reviewed by someone with local knowledge. It’s ‘Mr Powerful’ in China because ‘Mr. Muscle’ when spoken sounds like Mr Chicken Meat!

Checking that your mark does not translate into something offensive in a local Chinese dialect is one thing, but you should also work with a local attorney to develop a memorable Chinese language version of your mark. A genuine Chinese name with positive connotations can have serious benefits if you want to succeed in the domestic market.

How long does it take to register a Chinese trade mark?
Using the Chinese domestic system, as a foreign business, applications usually take around two years to proceed to full registration (if there is no objection or opposition). A trade mark is valid for 10 years, renewable indefinitely.

Other protection considerations
• Register your trade mark with Chinese Customs – this allows local customs offices to intercept infringing goods – the official fee is about £50 plus lawyer’s fees.
• Make sure your contracts with partners are clear and well-drafted (and enforceable in China!)
• Register your domain names, for example [yourbrand].cn and [yourbrand].asia
• Get local advice from Chinese IP rights experts

How can we help?

HCR liaise with trusted, well established Chinese firms to help protect our clients’ key brands in China. Our partners also specialise in trade mark applications across Asia, including Taiwan, Hong Kong, Macau and Japan.

Our own trade mark and International team (with Chinese local language speakers) have significant experience of doing business in China and helping our clients to establish their business and flourish across south east Asia.

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About the Author
Ed Kilner, Solicitor
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