First and foremost, if you manufacture or do business in the Peoples Republic of China (or are considering doing so), you should quickly and seriously consider Trade Mark Registration.
China operates a “first to file” system of Trade Mark Registration, which simply means that the first person to register a Trade Mark, regardless of the date of first use, secures registered protection. A number of high profile, global players have fallen foul of this “first to file” system because of their failure to register a Trade Mark swiftly in China.
Although China acknowledges rights in well-known Trade Marks, as a general rule, unregistered rights are only recognised in very limited circumstances, that should not be relied upon in isolation. Moreover, the enforcement of unregistered Trade Mark rights will almost certainly involve protracted ligation, which would be ostentatiously more expensive than taking the prudent steps of registering your Trade Mark in the first place.
Contrary to common assumptions about the state of Intellectual Property protection within China, Trade Mark Registration is relatively simple and inexpensive, although admittedly different, and the Courts are increasingly being proactive in enforcing Trade Mark rights.
Indeed, there has become an organised, predatory movement in China based around registering pre-existing foreign Trade Marks. These unscrupulous organisations operate by identifying internationally registered Trade Marks and “pipping to the post” the legitimate right holder. The acquisition of these Trade Mark Registrations allows the Chinese right holder to hold to ransom, at extortionately high prices, those who have worked hard over many years to build their brand and reputation by preventing the legitimate owner’s use of their Mark in China. The effect of this extends beyond those who merely want to expand their retailing of products into China, the Chinese Trade Mark system has previously been hijacked by both manufactures and distributors to prevent goods moving both in and out of the country.
The impact of failing to register your Trade Mark in China can have serious ramifications upon the viability of a business venture in China. Further, China is the world’s second largest economy by nominal GDP, and the world’s largest economy by purchasing power parity, which means even if you don’t quite agree with how Intellectual Property is managed in this State, you can’t really ignore its impact.
Here at Albright IP, we have the necessary expertise to help you and your company navigate this tricky area, as well as more than a few helpful hints. Please do contact us if questions arise regarding Trade Mark Registration in China or other countries around the world.
