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  • #993206
    SamM
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    Hi, I’m considering trademarking my brand name in China, I’m in apparel. However I don’t have immediate plans to sell my product in China but one day it’s a possibility. My product is manufactured in China and shipped and sold in Australia.

    I thought registering in China would be a good idea just in case someone else registered my brand name before me. I’ve been informed China is a “First to Register” system, so I figured I would get in first.

    But now I am reading if I can not prove I am selling my product in China then I am effectively squatting and the trademark could be cancelled. That would defeat the purpose and waste a lot of money.

    Does anyone have any thoughts on this?
    Sam

    #1190309
    LucasArthur
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    Hi Sam

    What an interesting thought process to TradeMark in China.. Will follow this post with interest as i know of several brands that have trademarked, although the brands (large american brands) are still mimicked within China itself..

    From what i have heard, and this could all be false conclusions, is that without deep pockets this process can be futile. Bit like a dogs bark, with said dog having no teeth. Meaning, to try and litigate within the confines of China (trademarked or not) can be difficult and expensive – both legal costs and under the table costs.

    Look forward to reading some updates :) from more qualified respondents.

    Jason Ramage | Lucas Arthur Pty Ltd | E: [email protected]   P: 61 3 8324 0344    M: 61 412 244 888
    #1190310
    Johny
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    You are right Sam, China does have a first to register system. Add that to the fact that a brand name can be registered in your English brand then someone else can come along and register the Chinese version, so you also need to consider that. I believe Chanel went through this problem a while back, and I also recall Michael Jordon got involved in lawsuits recently about the translation of his name being registered. Many instances of it happening.

    For me, the thing I would consider regardless of it being China or elsewhere is whether the cost of doing it is worthwhile. “Because I might..” wouldn’t be a good enough reason for me.

    What you will probably find is that no one will be interested in your brand anyway – unless it becomes popular. In which case, people will find ways around it.

    Apparel is so competitive in China that there are so many factors I would be thinking about before the trademark thing such as the likelihood of entering the market, the prospects if you do (why would people buy your brand as opposed to the exact same thing with a local brand name) etc

    The legal systems are getting better, and I would suggest two things:-

    1) Many look at these types of issues from the perspective of what happens in their own country then get miffed when the rules are different and

    2) The trademark is only the beginning. It is if you have to litigate to seem damages that the costs start to stack up.

    #1190311
    SamM
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    Thanks Johny for your excellent response. The other issue with registering in China is that there are so many sub-classes you need to spend a fortune covering enough classes. I read Apple ran into this problem with the iPhone where they had covered the ‘computer hardware/software’ class but not ‘cellphone’ which was in a different class.

    #1190312
    Johny
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    There is a Hong Kong based apparel company called G2000. I believe they had an issue several years ago that fits into what you are talking about. Here is a link:-

    http://chinabusinesslaw.blogspot.hk/2008/02/g2000-v-2000-is-20-million-yuan-enough.html

    Maybe useful inform you.

    #1190313
    SamM
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    thanks.

    #1190314
    SamM
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    It appears if you register a trademark in China you have three years to use it before someone can file for cancellation due to non-use:
    http://www.sptl.com/en/tm/tmcx.htm

    We have a policy in Australia too, but there is no time frame defined which I can see:
    http://www.ipaustralia.gov.au/get-the-right-ip/trade-marks/trade-mark-examination-process/non-use-of-a-trade-mark/

    Sam

    #1190315
    SamM
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    Here is a response I got from a China based Trademark lawyer, very interesting……

    Even if you’re not selling in China yet or planning to do so soon, it is still highly recommended that you register the trademark as long as you are using it (which would include manufacturing) here. Otherwise, someone else could register your trademark and apply for protection through customs, which would mean that they could effectively stop you from exporting YOUR products out of China.

    Additionally, the longer you wait to register a trademark, the higher the risk of the application being denied based on similarities with other trademarks that have already been granted.

    #1190316
    Johny
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    Sam, what else would you expect many a trademark lawyer to say?

    Of course there is merit in getting the trademark done, but is it the most effective use of your funds, especially at this time. Only you can decide that.

    Just to counter, I am currently dealing with a guy who has spent several million GBP patenting and trademarking his product and over several years he has wished he had saved the money as he estimated that what he spent is far in excess of what he would lose in the event his product was copied.

    Whether that is true or not I don’t know, but it does offer an alternate viewpoint.

    I stand by my previous comment that “because I might…” would not be enough for me to go down that road if I was in the position right now, but it’s easy for me to say that because I’m not the one having to make that decision.

    #1190317
    JacquiPryor
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    Hi Guys,

    Sorry for the late chime in… I’d just like to add that China did make a few changes to their laws last year I think it was… it’s now possible (or at least easier) to invalidate a registration in China if it was filed on bad faith – where you can demonstrate you have a past dealing with the person that files before you and that they shouldn’t have filed the mark (for example, your manufacturer, distributor, customer etc) – basically where you can show that person knew it was your trademark but still went ahead and filed before you. Of course, this doesn’t present people from having the applications filed in other names that are difficult to prove have any past relationship with your business.

    Sam – do you have registration in Australia for your trademark?

    If you file an application via a lawyer in China, you need to select all the sub-classes etc and you’ll likely be given a limit on the number you can select in each class.

    However, otherwise, you can file an application through the Madrid Protocol and designate China (this must be based on an application you already have in a member country, such as Australia). This then is filed for the same goods/services of your Australian trademark. The China Office may later ask you to be more specific with the goods descriptions but if you start of broad it’s much easier to then be more specific, rather than trying to be too specific initially and then missing something.

    You’re right also that China (and Australia, and many other countries) allow a mark to be cancelled or removed if it’s not used within a certain period of time; often this is 3 years. Usually this is at the request of another person though (rather than the Trademarks Office monitoring the marketplace and removing marks as soon as three years is up – it takes an application being filed by another party seeking the removal).

    Because China is a first to file country, the China Lawyer’s comments are all sound – even if yes, they would of course say these things to get the business.

    There are two sides to the coin I think:
    a) Stopping others using your brand in China if you register the trademark, which yes could be very expensive to litigate etc; and

    b) ensuring you have the right to use your brand in China and not be prevented by someone else that gets in first.

    If I assume you’ve already registered for apparel in Australia (one class) – then attending to your own international application through the Madrid System at today’s date (for single class of apparel) will cost approx $1200 – $1300 in government related fees. In a smooth case that would be all you pay to secure registration with the next fee due in 10 years for renewing the trademark.

    It would be a little less costly I imagine to go straight through a China lawyer but the Madrid system, as noted, will base itself on your Australian trademark – plus, it has another 90 odd countries available that you can basically add for a relatively low fee in the future if you needed to…

    Anyway, again, sorry for the late chime in. I hope the above is of some use :)

    #1190318
    Snakeman
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    OK, I have never dealt with China or trademarks in that country, but have used the Madrid protocol to register trademarks in the UK and USA via IP Australia here using my Aussie Registered trademarks and it was actually very easy (I am not a lawyer). A few years earlier I tried to register another Australian trademark I own in the USA by direct application (at the time they were not in the Madrid Protocol), it was knocked back and I couldn’t navigate the objections and so it failed. If I redid that trademark in the USA via the Madrid protocol, my guess is that I’d get it through now, but the need for that trademark to be registered in the USA is no longer present as it was when I attempted to earlier.
    all the best

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