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:

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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.

  • 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.