China IP: Neither Hong Kong Nor Macau Need Apply.
Interesting post over at China Business Law on registering IP in Macau, got me to thinking of a company who came to me last year for assistance in pursuing trademark infringement litigation in China.
As I always do in these situations, I first asked this company was whether it had actually registered its trademark in China. I ask this because many times American companies wrongly believe they have trademark protection in China simply because they have it in the United States. The company VP answered yes. We talked for another 20 minutes or so and then I asked him to send me all relevant documents. It was not until I got the documents that I discovered this company had not registered its trademark in China at all; it had registered it in Hong Kong. Our client had wrongly assumed that filing in Hong Kong constitutes filing in China.
Registering your trademark in China does not constitute registering your trademark in either Hong Kong or Macau, and vice-versa.
Oh, and while we are at it, registering your trademark in English in China does not constitute registering it in Mandarin or Cantonese, even in direct translation.
For more on registering trademarks in China, check out, "China Trademarks -- Do You Feel Lucky? Do You?"
http://www.chinalawblog.com/cgi-bin/mt/mt-t.cgi/2777
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Comments
Oh the woes of TM registration in China! My firm does IP enforcement, and I am consistently amazed at clients that come to us for brand protection services but have failed to adequately register their TMs here.
A client of ours (major Italian fashion house ) recently sent us every single international trademark certificate they have, including WIPO filings, so that we could conduct admin raids on their behalf. The only thing missing from this massive stack of documents? Chinese trademark certificates.
This client actually relies on a European law firm for their China counsel, and the law firm does not have an Asian office or partner! It is hard to believe that a major fashion label would operate here without any Asian legal rep, but such is life.
Posted by: Richard Gould | August 13, 2008 9:34 PM
I just don't get why this kind of foolishness (there's no other word for it) continues to be - the fault lies with the trademark agents/attorneys who should have known better. I'm presuming the TM agent in this case had little experience of international filing, or at least filing in China. Either that, or at the time of filing China just wasn't on their radar and they never re-visited that decision. There's no point in filing somewhere where you're just not going to be doing any business, but the cost of a TM application is so cheap (what? a few hundred pounds Sterling for the application? A bit more in renewal fees?) that if there's any chance of business in mainland China you should do it. Oh, and don't get the P.R.C. mixed up with the R.O.C. either, that would be silly . . . .
Posted by: FOARP | August 19, 2008 2:40 AM