Trade mark protection in China – special considerations
The importance of China, both as a potential market and also a manufacturing source
of products, has increased in recent years. However, China remains a challenging
environment for companies to protect their trade marks and one where special
considerations apply. China is also significant in terms of being the origin of many
counterfeit products.
In trade mark terms, China is a first registrant country, i.e. rights in a trade mark are
granted to the first to apply. As a result, companies can often find that by the time
they seek registration themselves, or wish to enter the Chinese market, a local
individual or company has already applied for and registered their trade marks. This
problem originally related mainly to the owners of well-known brands, but greater
internet availability and usage in China has increased the information available locally
on non-Chinese marks and as a result almost any trade mark with a web presence is
at risk.
Although, in certain circumstances, it is possible to challenge a local registration by
filing a cancellation trial, on the basis of “bad faith”, these proceedings are lengthy
and difficult to prove. They need to be supported by comprehensive and detailed evidence establishing that the company’s trade mark is well known internationally
and/or in China.
Local language issues also make China a country requiring special consideration.
There may be more than one way to represent a trade mark in Chinese characters.
Brand owners should therefore make sure that at an early stage they develop and
identify the way in which they wish to present their marks in Chinese, and also
consider any alternative versions which might be used, and seek registration of
these marks. If prompt action is not taken there is a risk that these Chinese marks
will be registered by third parties.
Additionally, local Chinese companies often apply to register trade marks under
other classifications of goods and services, in particular for packaging, in order to
try to create a “blocking” registration which the company may be forced to try to
acquire in order to clear its trade mark for use in China.
China is a member of the Madrid Protocol and therefore owners of International trade marks under the Madrid Protocol can apply to add China as a designation. This may often be the most straightforward way of registering marks in China, as
some of the formalities requirements which apply to local trade marks are avoided.
However, for marks that are focussed on presentation of the mark in Chinese
characters, and for coverage for goods/services that are potentially outside the
scope of a basic International registration, additional national filings may be
required.
There is a balance to be achieved between the extent of coverage sought and the
costs involved, especially bearing in mind that, if challenged, Chinese trade mark
registrations are vulnerable to cancellation on the basis of non-use after a three year
period. Nevertheless, special circumstances in China justify serious consideration of
a more comprehensive and robust filing programme than one that might suffice
elsewhere.
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