China is becoming an increasingly important export market for Australian food and beverage producers. Australian brand owners should not, however, assume that they are free to use their Australian brand name in China as someone else may have already secured a Chinese trade mark registration for that name.
China has a “first-to-file” trade mark system which means that whoever files a trade mark application first generally obtains the rights to that trade mark. This means that if you do not secure a trade mark registration for your brand in China, someone else may do so first and you may then be prevented from selling your product or providing your services under your brand name in China.
In some circumstances, an Australian brand owner may be able to take action to cancel an existing Chinese trade mark registration. For example, where it can be established that the trade mark has been registered by a trade mark squatter for opportunistic purposes in “bad faith”, or where it can be established that the trade mark has been registered by the Australian brand owner’s Chinese distributor. These types of trade mark cancellation actions are, however, uncertain and time-consuming as well as costly.
Consequently, if you are already selling or considering selling your goods/services in China, or even if there is a prospect that the Chinese market may be of interest to you in the future, you should consider filing a trade mark application to register your brand(s) as a trade mark in China as a matter of priority. In addition to applying to register your brand(s) in English, you should also consider registering a Chinese character mark(s) for additional protection.
Prior to filing a trade mark application in China, searches should be conducted to check whether there is already an existing registration for the same or a similar mark that may pose an obstacle to the use and registration of your mark.
Take-home message: You should secure trade mark registrations for your valuable brands in Australia as well as in your export markets. It is, however, particularly important to file in China as soon as possible given the “first-to-file” Chinese trade mark system.
For more specific information on any of the material contained in this article, please contact Louise Emmett, a Partner at Madderns Patent & Trade Mark Attorneys on +61 8 8311 8311 or firstname.lastname@example.org The team at Madderns includes a number of Chinese-speaking attorneys who can assist with conducting pre-filing searches of the Chinese Trade Marks Register and can also assist with selecting Chinese character marks. Madderns is a member of Food South Australia.