First to file rule

Last updated: 
2 December 2016

One of the most important differences between the Chinese trade mark system and ours is that China uses the first-to-file rule.

This short video explains how China's first-to-file rule works.

Under the first-to-file rule, the person or company to file their trade mark application first is generally granted the right to that trade mark and can stop others from using it.

This is a key difference from the system of trade mark protection in Australia:

  • in Australia even if you haven’t registered a trade mark, you might have some common law claim over that mark if you can show your business has been using it in the past
  • in China, the first person file for a particular trade mark generally becomes its owner if their application is successful.

To protect your business or brand, you should seriously consider registering your trade marks in China as soon as possible and before you start selling or operating there.

Failing to do so can have serious consequences for your business:

  • you can be prohibited from selling your goods under that trade mark in China if the mark is registered by another person or business
  • you can be prohibited from manufacturing your goods under that trade mark by an original entrusted manufacturer in China, even if you don’t plan to sell those goods in China
  • you cannot manufacture or sell your product bearing that trade mark together with the ® symbol if you do not own the trade mark registration in China, even if your trade mark is registered in other countries
  • without trade mark registration in China, you cannot use ® on the product that you intend to sell to the Chinese market, even if the product is manufactured and imported from a country where you own the trade mark
  • your Chinese manufacturer or trading partner could be barred from exporting the products by the trade mark owner
  • if someone registers your trade mark in China before you do, you might have to buy the trade mark back from them. Otherwise, you could face long and costly legal proceedings against the trade mark owner
  • other companies could use your brand on their own products, and if you haven’t registered your trade mark it is hard for you to prevent this. This is because a trade mark registration gives the owner the right to enforce their trade mark on good manufactured and sold within that country.

Securing Chinese language trade marks

It's important to secure the Chinese version of your English language trade mark. Most Chinese people prefer to use a Chinese name for products they buy. If you don’t register a Chinese version of your English language trade mark there is a risk that people will start using a Chinese name for your brand. Someone else could register the Chinese name and stop you from using it.