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China Law Blog China Law for Business

File Your Trademark In China. Now.

Posted in Legal News

Every few months or so, I see something that reminds me of how important it is to file your trademarks in China before anyone else does. I often tell clients that filing a trademark is about the only China legal no-brainer. Or as I said in a post from earlier this year, entitled, “China: Do Just One Thing. Trademarks,” if you do nothing else to protect your company in China, register your trademarks.

Apple Computer is learning the importance of being first to file a trademark in China. Apple just lost a lawsuit in China against Proview Technology over ownership of the iPad name. Proview Technology filed a trademark for the iPad name in China back in 2000 so my initial reaction to the lawsuit was that Apple had zero chance of prevailing. China is a first to file country, which means whoever files for a trademark first (with only a few rare exceptions) gets it. Turns out the case is not so simple in that Apple’s claim was actually based on a 2006 contract it had with Proview to buy the iPad name from Proview. So the real question in the case appears to have been one of contract interpretation, not China trademark law.

Every few months, my firm gets a call from someone seeking either to sue someone in China for having “stolen” their trademark or seeking to buy it. I put quotes around the word “stolen” because if someone beats you by filing “your” name as a trademark in China, they have not stolen anything; they have merely beaten you to a name by being the first to file it.

When someone retains us to try to buy a name from a Chinese company that has registered it as a trademark in China, the first thing we do is try to learn more about the company and what it is actually doing with the trademark. That helps us develop our initial offering price. Then we have a Chinese person (NOT a lawyer) call to see about buying the trademark. We would never call the company ourselves because we figure that a foreigner calling drives up the price 100-fold. A Chinese lawyer would have a similar effect.

We are also increasingly getting retained by American companies seeking to register their competitors’ trade names in China before their competitors catch on to the need to do so for themselves.

How can you stop a Chinese or a foreign company by beating you to “your” name in China? One simple way, register it before they do.

For more on China trademarks, check out the following:

  • gregorylent

    have to laugh at this .. “We are also increasingly getting retained by American companies seeking to register their competitors’ trade names in China before their competitors catch on to the need to do so for themselves.”
    no wonder people hate businessmen.

  • James G

    What about books and other print material? What can be done when you have this sort of low-priced good that you might one day like to introduce into the Chinese market, perhaps even as a translation, would you just trademark the title of popular fiction works since the book itself would be translated? I
    I am thinking about all the knock-off Harry Potter books that have proven to be so popular in China. Also, who does trademark work with character names, would I be able to trademark the name of a character in English or just it’s transliteration? I have wondered about that since transliterations can be all over the map.
    I am sure the IP of physical products is vastly different from that of literary, cinematic or musical work. I guess that physical products are much easier to protect, right? Besides the obvious downloading/file sharing issues.

  • Ames Tiedeman

    Why bother? I just read that China refused to allow Apple Computer to trademark iPad.