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?

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Dan Harris

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

I mostly represent companies doing business in emerging market countries. It has taken me many years to build my network and it takes constant communication and travel to maintain it. My 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.

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

I am a frequent writer and public speaker on doing business in Asia and I constantly travel between the United States and Asia. I most commonly speak on China law issues and I am the lead writer of the award winning China Law Blog (www.chinalawblog.com). 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 me regarding various aspects of my international law practice.

I am licensed in Washington, Illinois, and Alaska.

In tandem with the international law team at my firm, I focus 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.