Jessica Huntley, IP Australia
So you have taken the leap and launched your business in China, but you have forgotten to register to your trade mark and someone else has beaten you to it, what do you do?
This is the single most common IP issue affecting foreign businesses in China, and it affects all companies, big and small. China has a first to file trade mark system, which means the person or company to file a trade mark application first is generally granted the right to that trade mark and can stop others from using it.
If someone else has registered your trade mark in China there is no easy solution, however you do have a few options. Firstly you could negotiate a reasonable price with the owner and buy the trade mark from them. This can hurt, but it is often the most pragmatic option.
You could try to oppose or invalidate the trade mark. Unfortunately, success rates are very low. This option is more likely to be effective if you can show you had prior business dealings with the person who filed the trade mark, such as if your distributor or business partner applied for your trade mark without your consent.
Finally, you could develop a new brand for the Chinese market. This is what Sanitarium did, rebranding Weet-Bix as Nutri-Brex for the Chinese market after UK-based Weetabix filed their trade mark in China first.
Prevention is better than cure! To avoid these issues you need to apply for trade mark protection in China as early as possible.
For more information on IP protection in China visit IPAustralia’s website.