Protecting your trade mark is important everywhere your business operates and this is certainly true of China. If you sell or manufacture in China, we strongly advise that you register your trade marks there. This allows you to use and promote your brand, and to stop others from misusing it.
China’s trade mark system has some similarities to ours, but there are some important differences.
The first-to-file rule
In Australia, even if you haven’t registered your trade mark, you might have some legal claim over that trade mark if you can demonstrate the reputation your business has gained from using it in the past.
In China, prior usage is not considered within the trade mark examination process. The first person to file for a particular trade mark becomes its owner if their application is successful.
This short video explains how China's first-to-file rule works.
If you are planning to operate in China, it is very important that you seek trade mark protection as early as possible. Otherwise, you might be stopped from producing and selling your goods under that trade mark if the mark is registered by another person or business.
You could also be vulnerable to ‘trade mark squatters’ who get in quickly to register a trade mark before the foreign owner. You would then have to buy the trade mark from them before you could use it or start long and costly legal proceedings to recover the mark.
It’s important to secure the trade mark for your brand in:
- Chinese characters (translated)
- Transliterated form
The difference between translation and transliteration
Chinese customers would prefer to use a Chinese name for your brand.
If you do not select a Chinese version of your brand quickly, your distributors, manufacturers and even the customers themselves will start using a Chinese name. Someone could then register this name and block your marketing and business in China.
It is important to consider a Chinese name or transliteration for your brand at an early stage, and to have a branding consultant or lawyer tell you the different meanings for the Chinese characters.
In transliteration, after a trade mark has been translated into a Chinese name, an English equivalent is created. For example, Penfolds has been transliterate to Ben Fu.
The Chinese Trade Mark Office has a full schedule of fees available on their website, however translation is required.
Indicative prices to register a trade mark in one class, with up to 10 sub-classification items, is RMB 600. If the number of items exceeds 10, there is a fee of RMB 60 for each additional item. Additional fees will be charged by your Chinese trade mark agent or IP professional.
For a standard trade mark it takes 12 to 15 months from application to registration.