China Business Law Blog has an excellent post up, entitled, “China Trademark Update: Has Your Distributor (Representative, Manufacturer) in China Registered your Mark?” stressing the importance of foreign companies registering their trademarks in China soonest. Beyond that, the post does an excellent job analyzing a Chinese Supreme Court case holding that agents who register the trademarks of those for whom they are agents cannot hold on to the trademark.
What this means in real life is that if you are a foreign company manufacturing your product in China, the company you use to find your manufacturer and the company you use for your actual manufacturing cannot file your foreign trademark in China. So if you have a United States trademark and you make the huge mistake of not registering your trademark in China when you first go over there, there are about 1.3 billion people in China who can register “your” U.S. trademark in China and “take” it from you, but your agents are not one of them.
What this really means though is that everyone in China can usurp your trademark by registering it, even your agents. This agent exception to China’s first to file rule has become so well known that any agent with any intelligence will not go off and register your foreign trademark in China. Instead, they will have their cousin or brother in law or someone else go ahead and do it so as to avoid the agent rule.
Forget you ever heard about the agent rule. There is still only one real solution to protecting your trademarks in China: register your trademark as soon as possible.
For more on this, Check out “China Trademarks — Do You Feel Lucky? Do You?