Publications / Intellectual Property

8 Feb 13
Get in quick - the battle to secure trade marks in China

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What do Britney Spears and Hermès have in common?  Both have fought and lost trade mark battles in China to trade mark squatters.

Australian businesses should act quickly to secure their trade marks in China before opportunistic ‘trade mark squatters’ get in first.

How does trade mark registration in China work?

The trade mark registration system is different from country to country.  Australia follows a ‘first-to-use’ system where the first user of a trade mark generally has better rights. 

China however follows a ‘first-to-file’ system.  Meaning the first person to file a trade mark in China will generally have priority over a prior user of the trade mark (even the legitimate brand owner).  This system in China has unfortunately lead to ‘trade mark squatting’ becoming commonplace. 

All too often legitimate brand owners have to fight to secure their own trade mark back from opportunistic trade mark squatters who have seen the trade mark has not been filed in China.  Those battles are not always successful and providing evidence of well known reputation to successfully oppose a prior filed trade mark often proves extremely difficult and costly.

For instance, French luxury group Hermès, recently lost a trade mark dispute after registering the name ‘Hermès’ in China, but failing to register the Chinese translation which was then used by a menswear clothing company.  Michael Jordan is also fighting against a Chinese sportswear manufacturer who registered ‘Jordan’ in Chinese characters and built a business in China under that name without his authority.  Britney Spears has also lost a trade mark battle against a Chinese clock manufacturer for failing to register the Chinese character mark for ‘Britney’. 

What trade marks can I file in China?

Brand owners can file trade marks in China for:

  1. the English brand name;
  2. any associated logos;
  3. the Chinese translation of the meaning of the brand name;
  4. the Chinese phonetic translation; and
  5. the Chinese characters for the brand name.

Care should also be taken to ensure that the Chinese translation of the English brand name is favourable.

Key lessons

Intellectual property protection remains a challenge in China where trade mark squatting is commonplace.  Australian companies doing business in China, from importing or exporting goods (or considering doing so in the future) should file trade mark applications in China at the earliest opportunity and well before entering the Chinese market. 

Brand owners should also keep records of evidence of trade mark use and well known reputation along with arranging for a trade mark watching service to monitor new applications for similar marks that should be opposed.  Filing the English translation of the brand only may not be sufficient and expert advice should be sought on filing the Chinese character and translation equivalents to ensure broad protection.

McCullough Robertson offers a full service trade marks practice and can assist you with seeking trade mark protection for your brand in China. 

Focus covers legal and technical issues in a general way. It is not designed to express opinions on specific cases. Focus is intended for information purposes only and should not be regarded as legal advice. Further advice should be obtained before taking action on any issue dealt with in this publication.

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