David Woronov, a Boston-based international lawyer told me a very instructive China trademark story the other day.

Seems a company had come to David with a big China trademark problem. This company had decided to have its products manufactured in China and it thought it could rely on its United States and Madrid protocol filings to protect its trademark/brand in China. It though it could better protect its products by farming their production out to various different manufacturers in China.

Very quickly, this company learned that one of these Chinese manufacturing companies had applied for Chinese trademark registration of the U.S. company’s name and logo in the category of the product it was making for the United States company.

The U.S. company filed “numerous and detailed objections” with the China trademark office to try to stop the registration. Then it sought to negotiate a resolution with the Chinese company with the following result:

It [the United States company] has been able to get full assignments of the trademark applications and any and all attendant rights from and by the Chinese usurper, in exchange for an agreement to order more volume of these products from them (in an unusual twist on all roads lead to Rome, some very reputable folks I work with here and in China went looking for an alternative manufacturer for this particular product, and after peeling away the various trading companies and other middle folks, they always ultimately ended at this same manufacturer). In short, the anticipated delays to the Chinese registrations that might be caused by the objections filed by our client, together with the prospect of losing all current and future business from our client, were enough to cause the Chinese company to capitulate completely. I guess they were not prepared for the costs of capitalizing their own competing business from scratch. Greed may be alive and well, but cash flow is still the king!

In other words, using incentives, the U.S. company was able to keep “its” name in China. 

I mention all of this because it has been too long since I wrote a post extolling what I have extolled so many times before. If you want to protect your name or your trademark or your brand or your logo in China, you absolutely must register it in China. And there is absolutely no benefit in your waiting to do so because every day you wait is just another day for someone to sneak in and register it in their own name.

For more on the need to register your trademark in China, I suggest you check out the following:

China Trademarks — Do You Feel Lucky? Do You?

China Trademarks — Do You Feel Lucky? Do You? Part II 

What do you think?

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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.

  • You are like a martyr Dan.. Good to see you still extoll on this issue where the volume in prevention is still too low compared to useless oh-gosh-how-can-this-be-look-at-me-I-am-doomed-why-didn’t-I-do-that-earlier-at-a-fraction-of-the-cost kind of scream.
    EU-speaking, WITHIN China (BJ and SH) there is a proliferation of entities and non-profit desks for SMEs to get it together with their IP; not to mention roundtables or even the newsletters spilled out on the web in embarassing quantities.
    Outside China many EU member States have been doing a lot on prevention on TM infringements as these and free-riding issues. Especially on patents and infringements at fairs. What might be missing is a bit more centralized entity that deals only with these topics, gives handy and applicable advice that is digestible even by the entrepreneur and that doesn’t particularly need an in-house lawyer or such. This entity should be a mandatory step on the board game for whoever looks towards China.
    However, various SMEs still manage to mess it up because they only read “the first definition in the book” neglecting other ways and means. Maybe natural selection is good.

  • MADRID

    So, in effect, is registering your mark via the madrid protocol worthless in China? Wonder how many other countries it is worthless in…