Engaging an attorney to protect your trade mark in China

Last updated: 
10 July 2017

Why hire an attorney

China has a very different trade mark system to ours, so it's a good idea to seek expert advice on how to protect your brand before you start operating in China.

A lawyer with expertise in the Chinese intellectual property (IP) system can help you register your trade marks in China and assist you should any disputes arise.

The way your trade mark is translated and transliterated in China can have a big impact on how it will be perceived by local customers, so advice from a firm experienced in Chinese law will prove invaluable, even before you apply to register your trade mark.

A lawyer with local expertise will be better able to navigate their way through Chinese IP system, with less risk than an outsider.

As in any other country, engaging a trade mark lawyer in China is a matter of finding a lawyer with suitable expertise and who is proficient in IP protection and enforcement.

A track record of representing foreign brands

The right lawyer can help you before, during, and after the trade mark application process. They will be able to advise you of the strategies to put in place to protect your trade marks, safely develop your brand in China, enforce the protection in place and help you expand your trade mark portfolio when required.

Unlike Australia, China does not have a profession for registered trade marks attorneys.

When choosing a trade mark attorney or IP lawyer in China, it is best to choose an individual or firm which has a track record of representing overseas clients and foreign brands in China.  The trade mark attorney or IP lawyer should have good verbal and written English language skills to ensure ease of communication. 

When it comes to hiring an attorney, you have two options – hiring an Australian firm with a presence in China or directly engaging a Chinese attorney.

Choosing an Australian firm with presence or trusted foreign associates in China

The easiest way to engage a trade mark lawyer in China is to choose an Australian law firm that has offices in China and deep expertise in IP protection and enforcement.

This will allow you to discuss your issues to a local lawyer in English, who can then engage their Chinese colleagues to assist you. You can also rely on the local law firm to find the lawyer with the correct expertise in the right city in China to assist you.

If you already have an established relationship with a law firm or trade mark attorney firm in Australia who you work with to manage your trade marks, you can enquire whether they have a strong relationship with trusted foreign associates in China.

While it may be slightly more expensive to retain both an Australian law firm and a Chinese law firm, the fact that they are professionals and know their way around the system means that they are not likely to fall into traps for the unwary. This will ultimately save you time and money in the long run.

Directly engaging a local Chinese firm

If you have a sophisticated understanding of your needs in China, choosing a local Chinese firm and instructing them directly might be cheaper than engaging lawyers through Australia. You will pay for the services of one firm and one firm only.

In China, non-Chinese law firms are constrained by regulations that prohibit them from practicing Chinese law so they usually sub-contract work to a local law firm, the client then pays for the work of two firms while not necessarily being able to communicate directly with the lawyers in charge of defending their case.

While choosing the right local firm for an Australian client might initially be time-consuming, it can ultimately save time, especially in terms of communication, translation and interpretation. In most large cities in China, English is now widely spoken among local lawyers, especially in large firms.

Choosing a local law firm provides advantages that a foreign firm cannot provide, most significantly knowing how the system works at a local level.