The risks of not registering your brands in China
The key concerns for brand owners to be aware of in the context of their rights and issues in China are:
- By placing your brand on goods manufactured in China, you are using that trade mark in China even if those goods are only intended for export. If you have not registered your brand as a trade mark in China, but a third party has, this could result in you infringing someone else’s registered trade mark rights;
- Chinese manufacturers may proceed to register the brands themselves to protect their own commercial position. As China’s trade mark system is based on the rights going to the ‘first to file’, this can result in serious issues arising in the event that the brand owner no longer wishes to use that Chinese manufacturer for its products;
- If you are exporting your branded products from China, but you do not have the brand registered in China as a trade mark, the goods could be seized by customs as suspected counterfeit goods. Although there are means to have the goods subsequently released, assuming they do not infringe someone else’s registered mark in China, it is very costly and causes unwanted and unnecessary delay in getting those products to market. If the goods do infringe a registered mark in China, they will not be released.
The legal position on whether goods manufactured in China for export only will infringe a trade mark registered in China is still uncertain. Chinese courts have issued different opinions on this point.
- Therefore, the safest approach is to ensure your brands are protected before manufacturing is commenced.
What can be done?
Register your brand as a trade mark in China asap
Contact Sweeny Legal reception on 4254 5312 or 0417 699 645
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