Plan Ahead If Manufacturing or Selling Goods in China
It is wise to plan ahead if manufacturing or selling goods in China particularly if a trade mark is involved. A trade mark is only protected once it has been registered in China. The first person to register the trade mark is the owner. The registration process is lengthy, so ensure to start the registration process as early as possible.
Also, a Chinese character version of the trade mark should be developed and used. The Chinese character version of the trade mark should be used in any advertisements and when providing information about the goods or services. The English and Chinese character version of the trade mark should be used together and often.
There are limited options available to deal with a situation where a third party has registered another person’s trade mark in China. That being said, if the trade mark is well known this will help, or if a legal relationship exists, these are usually sufficient grounds for cancelling the third party’s registration. However, it is far more effective and less costly to register early than have to challenge the validity of a registration or oppose an application.
Other considerations include Copyright registration and registering the trade mark with Chinese Customs. If the trade mark consists of a logo, then Copyright registration is both less expensive and quicker when compared to trade mark registration. Copyright registration can be achieved in 1 to 2 months and has the added value that it is not limited to any particular goods or services, as is the case with registered trade marks. Copyright registration can be useful to prove ownership of a logo or device in opposition or removal proceedings against another trade mark. Moreover, if the trade mark is registered with the Chinese Customs, this is both inexpensive and quick and permits the Chinese Customs Office to search outgoing exports for possible infringing products.
Once a Chinese character trade mark has been developed it should be registered as a trade mark. Chinese consumers invariably refer to foreign brands by a Chinese version of the brand name. This will happen when a foreign trade mark is used in China and if there is no official Chinese language version of the mark, then local Chinese customers will create a Chinese version, sometimes harmless, but sometimes a parody or less flattering. For example, the name commonly used by Chinese consumers for VIAGRA is the Chinese language words for “BIG BROTHER”. A Chinese company registered the Chinese character version of these words, and Pfizer spent over a decade trying to obtain the Chinese character mark for BIG BROTHER mark but did not succeed. In a 2015 case, New Balance Shoe Inc., owned the English language registration for NEW BALANCE. A Chinese national registered the Chinese character mark for NEW BALANCE. The US company had used the English and Chinese version of NEW BALANCE for its products in China but had failed to register the Chinese character version. The US company was successfully sued by the owner of the Chinese character mark, and it was required to cease using the Chinese character mark, and to pay AU$16 million in damages.
It is important for businesses to develop and consistently use a Chinese character version of their trade marks, taglines and company names, which reflect the meaning of the marks and brands and the image of the business. If assistance with trade marks in China is required, IP Solved is ready to answer any questions you may have.