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China – protection of your trade marks


14th Dec 2012

Following on from last week’s article about patents in China, there’s a reason to consider registration of your trade marks there too. And, as with patents, it’s not that expensive and you have the choice of national registration or designating China in an International Registration.

We read in the press about cloned stores appearing in China, full of counterfeit products. The hotel industry report total copycat hotels replicating faithfully all branding. There’s no doubt the Chinese are good at copying. And their love of Western brands is on the up and up. A recent reported case concerned a major coffee chain, whose logo was taken as the starting point for what started life as a small mom-and-pop cafe. Before long, it had grown to a significant chain across China. Not only is the copying precise, it can spread very quickly.

Chinese unfair competition law is very much in its infancy compared with the law we know here. We hear that brand owners need an established reputation in China to qualify for that sort of protection. Actions against unauthorised use are much simpler with a trade mark registration to hand. And the registered brand owners are having some success. It is no longer the case that success is so unlikely it is not worth the bother of filing. Indeed, the owners of the mark HAAGEN-DAZS have just recently prevented registration by others of the mark HAAGER-DASZ for clothing, even though their earlier Chinese registered rights were for ice cream.

Experience shows that unauthorised third party trade mark applications are increasingly being filed by Chinese applicants. Oppositions based on the argument that this is a famous Western brand are difficult without earlier local registered rights. We are advised that a mark with reputation argument needs evidence of use of that mark in China, not here at home, and that the reputation evidence needs to be quite strong. Bad faith can be used as a ground of opposition and, in a case we are handling, we are advised to involve the British Embassy in China, who have written directly to the Head of the Chinese Intellectual Property Office. There is no question that an earlier registered mark in China would have given a simpler, and less costly, basis on which to oppose.

The Chinese IPO also still examine an application for conflict with earlier trade mark filings so with a registration in place, you may find that the newcomer’s application fell at the first hurdle and no opposition was ever needed.

We can help register your trade marks in China. There are benefits to filing English marks in local script as well and we can advise on choice of transliteration if you do not have one already. Please get in touch if you would like some more information.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.

Author
Helen Wakerley
Partner
About the author

Author
Tom Sharman
Partner
About the author

Would you like to know more? You can talk to Helen Wakerley who will be able to help. Call +44 (0)20 7242 0901

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