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Chinese law generally does not protect a trade mark unless it is registered in China
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It is always cheaper for a company to register its trade mark than to litigate
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China is a first to register country which means that unless your trade mark is well-known (and that is a difficult exercise to prove) whoever registers a mark first in China is the trade mark owner
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Litigation to displace registered rights is a costly and often ineffective exercise.
Australian companies manufacturing and selling in China need to be proactive in enhancing their trade mark protection, and a prudent company will search the availability of its trade mark and register before manufacturing or selling in China. The preliminary steps are:
- Conduct searches to ensure the availability of your trade mark for use. For example, placing your brand on goods that are manufactured in China is considered use in China even if the goods are only intended for export. So “use” of a registered mark in this way could result in your products being seized by customs or infringement proceedings.
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Register your trade mark at the earliest opportunity after searching. Securing registration in China, where there is a huge backlog at the Chinese Trade Marks Office, can take a number of years (although once registered, your rights are in most cases effective from the original date of filing).
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Consider filing your trade mark for all products or services for which you intend to use the mark.
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If the mark is intended to be used in a logo form, also file an application for the logo.
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Consider creating and registering other versions of your trade mark to gain added protection. You may consider registering your brand as your word mark, and logo, together with a Chinese literal and/or phonetic translation (in Roman characters) and a Chinese transliteration (in Chinese characters). This bundle of registrations offers broad protection against piracy.