The Handshake: The globalisation of Australian brands and why you need to register your Chinese trade mark application now

Monday, 15 June 2015

The globalisation of Australian brands and why you need to register your Chinese trade mark application now

Malcolm McBratney, Alex Hutchens, Kellie Jukkola, Alexia Marinos

With more and more Australian companies entering the lucrative Chinese marketplace, it’s important to register your trade mark in this jurisdiction as soon as possible or you may miss out and in the process dilute your future ability to promote your brand globally.

Unlike Australia, China has a ‘first-to-file’ approach to trade mark registration. This means the first applicant for a trade mark will generally acquire rights in the mark, even though they may not be the first user of the brand in that country.

Given this approach, it is not uncommon for trade mark squatters to register well-known or emerging brands in China in an attempt to secure payment from legitimate brand owners in exchange for transfer of the trade mark registration. Recovering a trade mark that has been registered in bad faith by an unrelated applicant, though not impossible, can be a costly and time-consuming exercise for legitimate brand owners.

Registering a Chinese trade mark application as early as possible will also give you added protection against the production of counterfeit goods and the illegitimate use of brands, which is not uncommon in Asia.

Brand owners are unable to enforce against infringement on Chinese-owned marketplaces such as Taobao and TMall without a registered Chinese trade mark. This means there is the potential for the misappropriation of your brands and products in the Chinese marketplace and the possibility that this could continue unhindered. Not only does this have the potential to lead to significant loss of revenue, it also carries with it a risk of brand dilution and damage to the reputation of the legitimate trade mark owner whether you want to sell your products in China or not.

For these reasons, it’s important that businesses ensure protection of their intellectual property rights in China as early as possible, even if you have no immediate plans to manufacture or sell products in the country.

Please contact us if you would like further information about filing your Chinese trademark application.