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Are You Expanding Your Business into China?

Michael McDonald | July 21st, 2014

If so you should consider registering your brand as a trade mark in Chinese characters.

Did you know that even if you have your trade mark registered in China in English characters,  it will not protect another party from registering your brand as a trade mark in Chinese characters?  Well, unfortunately this is the case because although the trade marks translate as the same words/meaning, the Chinese trade marks office treats them as entirely different trade marks.

This is primarily because China is a ‘first to file’ jurisdiction, where the emphasis is on who files the trade mark first rather than who has the greater legitimate right to the brand (eg. through development of a reputation in the course of trade).

We are finding that increasingly, trade mark pirates in China are taking advantage of this loophole to file applications in Chinese characters that mirror well known brand names.

This leaves the legitimate trade mark owner in the position where they are forced to engage in a formal ‘opposition’ procedure through the Chinese trade marks office in order to prevent the pirated trade mark from proceeding to registration.  The opposition procedure requires material to be submitted to the Chinese trade marks office to validate the rights of the legitimate owner.  It is therefore more costly to fund an opposition action than to file a trade mark application in Chinese characters.

Further, if you do not have a trade mark registration in Chinese characters, even if you successfully oppose an application by a trade mark pirate, there is every chance that further pirate applications may be made by other traders.

It is therefore much more cost effective to have a trade mark registration in Chinese characters than to have to constantly fight off trade mark pirates.

If you are interested in registering your trade mark in Chinese characters, please let us know and we would be happy to assist you.

About Sarah Verstak

Sarah has 13 years’ experience in intellectual property (IP), litigation and commercial law.  She has significant experience in protecting, structuring and enforcing clients’ IP rights and assisting clients to expand their brand protection internationally.

About mdp

We provide the following services:

  • conducting trade mark searches and providing advice regarding adopting new brands;
  • expanding the scope of protection of existing brands;
  • registering all forms of IP in Australia and overseas;
  • providing commercial and structuring advice;
  • preparing licence and franchise agreements;
  • expanding businesses internationally;
  • IP enforcement; and
  • commercial litigation.

If you have any queries, please feel free to contact Sarah Verstak on 03 9620 9660 or sverstak@mdplaw.com.au.

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Michael McDonald

Michael McDonald

Director, BA LL.B at mdp
Michael is a highly respected and pre-eminent lawyer, commercial advisor and businessman with a career spanning more than 35 years across corporate, commercial and intellectual property law. He has specialist expertise in, and passion for, commercialising and growing Australian businesses both in Australia and internationally.
Michael McDonald

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