China trademark registration

Our advice to all companies that do any business with China (including those who simply have their products made in China) is to register their trademarks in China before they go there.

China is a first to register country, which means that whoever registers the trademark first gets it.

Yes, there is an exception for famous trademarks, but unless you are Coca-Cola, it is lunacy to bank on a Chinese court holding your trademark is famous when just going ahead and registering it costs so little. Most firms charge less than $5,000 for this. So even if the Chinese Court rules your trademark is famous, you will probably have spent at least $100,000 in making your case. The economics just are not there.

Ferrari, the famous Italian car manufacturer, just proved our point.

In Ferrari is Famous, But Is the Horse Too?, China Business Law Blog wrote on how Ferrari lost its ability to use its famous (but not famous in China) horse logo in China. The post relates how after more then ten years of legal wrangling (anyone think that cost less than $100,000?), the Beijing First Intermediate Court ruled that Ferrari’s horse is not famous enough in China to be considered a famous trademark.

In 1996, White Clouds Sports Merchandise filed for trademark protection of a horse logo to go with a clothing line. Ferrari filed a timely opposition to this registration, claiming that granting White Clouds the trademark would confuse consumers. “The Chinese Trademark Office did not buy Ferrari’s argument, citing that White Clouds registered the graphic of the horse first.”

Undaunted, Ferrari appealed to China’s trademark review board, claiming “both the Ferrari with the horse graphic trademark and the horse graphic alone constituted famous trademarks.” The review board denied Ferrari’s appeal and Ferrari then took its case to court.
Before the court, Ferrari again claimed that the graphic of the horse is closely tied to the Ferrari mark, and it should be considered a famous trademark because the Ferrari trademark has become well known around the world, including in China. The court rejected Ferrari’s claim for the following three reasons:

  • Ferrari failed to provide sufficient evidence regarding its use of the horse logo in China.
  • China has a system for recognition of famous trademarks. Recognition of the name “Ferrari” as a famous trademark does not constitute recognition of the Ferrari horse graphic.
  • The issue in the case is the horse logo, not the Ferrari trade-name. The horse cannot be bootstrapped to the Ferrari trademark for similar protection.

China Business Law Blog concludes its post with some good advice:

After more than ten years of trekking in the Chinese legal system, Ferrari got a disappointing verdict. Hopefully, Ferrari got something else too: a lesson to register its trademarks, [and] related trademarks as early as possible.

Or, as my friend Dan Hull, over at the perennially enlightening What About Clients, puts it, Dude, register your IP in China.

Or do you feel lucky?

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Photo of Dan Harris Dan Harris

Dan is a founder of Harris Bricken, an international law firm with lawyers in Los Angeles, Portland, San Francisco, Seattle, China and Spain.

He primarily represents companies doing business in emerging market countries, having spent years building and maintaining a global, professional network. 

Dan is a founder of Harris Bricken, an international law firm with lawyers in Los Angeles, Portland, San Francisco, Seattle, China and Spain.

He primarily represents companies doing business in emerging market countries, having spent years building and maintaining a global, professional network.  His work has been as varied as securing the release of two improperly held helicopters in Papua New Guinea, setting up a legal framework to move slag from Canada to Poland’s interior, overseeing hundreds of litigation and arbitration matters in Korea, helping someone avoid terrorism charges in Japan, and seizing fish product in China to collect on a debt.

He was named as one of only three Washington State Amazing Lawyers in International Law, is AV rated by Martindale-Hubbell Law Directory (its highest rating), is rated 10.0 by AVVO.com (also its highest rating), and is a recognized SuperLawyer.

Dan is a frequent writer and public speaker on doing business in Asia and constantly travels between the United States and Asia. He most commonly speaks on China law issues and is the lead writer of the award winning China Law Blog. Forbes Magazine, Fortune Magazine, the Wall Street Journal, Investors Business Daily, Business Week, The National Law Journal, The Washington Post, The ABA Journal, The Economist, Newsweek, NPR, The New York Times and Inside Counsel have all interviewed Dan regarding various aspects of his international law practice.

Dan is licensed in Washington, Illinois, and Alaska.

In tandem with the international law team at his firm, Dan focuses on setting up/registering companies overseas (via WFOEs, Rep Offices or Joint Ventures), drafting international contracts (NDAs, OEM Agreements, licensing, distribution, etc.), protecting IP (trademarks, trade secrets, copyrights and patents), and overseeing M&A transactions.