Does an Australian Trade Mark Protect My Trade Mark in China?

Angus

• 3 August 2021
• 3 August 2021
• 5 min read

You must register your trade mark with the China Trade Mark Office (CTMO) if you wish to protect it in China. A trade mark registration can provide you with more straightforward and cost-effective enforcement alternatives than are otherwise accessible, such as criminal remedies against counterfeiters. Without registration, enforcement under China’s rules and regulations on the basis of unfair competition is still technically feasible. However, as in other countries, protection under such laws is considerably less predictable and usually more expensive.

If you are looking to protect your trade mark in China, this article will explore some of the key considerations to think about before you do. 

When to File a Trade Mark Application in China?

For securing trade mark rights, China uses the first-to-file rule. This implies that the person who files their trade mark application first is usually the one who gets to register the mark.

In Australia, the person who first uses a trade mark has the right to register it. But in China, earlier use of a mark provides little or no protection. As a result, it is critical to file trade mark applications as soon as possible in China. Ideally, this would be long before entering the Chinese market. When you fail to file early, you leave the door open for others to file ahead of you. Additionally, because of pre-existing registrations, your items may be barred from entering the Chinese market in some instances.

There are several examples of trade mark counterfeiters obtaining registrations before the genuine brand owner and threatening infringement lawsuits against legitimate goods distributors. In such situations, market realities in China frequently require the brand owner to pay considerable compensation to counterfeiters to get the assignment of trade mark registrations.

Maintain Trade Marks in China

A third party can request to have a trade mark withdrawn for non-use in China if it has been registered for three years and has not been utilised. In response, the trade mark owner must then show that they have used the trade mark. This is frequently when trade mark squatters get caught out because they are unlikely to have evidence of their usage. Therefore, their registration will be subject to a non-use removal action.

You should save proof of your trade mark’s use in China once you have successfully registered it. Alternatively, if you have not used your trade mark, you may want to try re-filing your trade mark application to push back the required ‘use’ date.

How to Stop Other Companies From Using Your Trade Mark in China?

The easiest approach to avoid counterfeiting is to register your trade marks as soon as possible. However, if someone seeks to register your trade mark, you can submit an objection. You can do this once it has been published in the Trade Mark Gazette. It is typically preferable to submit an informal letter to the CTMO prior to gazettal, bringing your rights to the notice of the relevant examiner. This is provided, of course, that you have prior registrations in China. 

In most cases, an opposition will last three to four years. The loser of an opposition can submit an appeal with the Trade Mark Review and Adjudication Board (TRAB). This process usually takes another five to seven years to make a judgement.

You can appeal the TRAB’s rulings all the way to Beijing’s Intermediate People’s Court.

What if Someone Else Has Registered My Trade Mark in China?

Other people’s trade marks can be cancelled if they file a petition with the TRAB. It is always a good idea to back up such cancellation proceedings with comprehensive evidence of your mark’s reputation and use, both in China and throughout the world. It usually takes five to seven years to determine cancellations. During that period, it is extremely difficult to prevent the counterfeiter who stole your mark from utilising it. Suppose someone has registered your mark but has not used it in three years. In that case, you can petition the CTMO to have the registration cancelled on the grounds of non-use. In most cases, a non-use petition is decided within one to two years.

Is the ® Sign Used in China?

It is prohibited in China for a trade mark to appear with the ® sign unless it has been registered there. A trade mark registration affected in Australia or another country does not permit the use of the ® sign in China.

Additionally, in China, misuse of the TM sign may result in fines or other consequences. Australian traders can mitigate this risk by deleting or obscuring the ® symbol that may appear next to their registered trade mark in Australia.

Key Takeaways

 Before deciding to protect your trade mark in China, you should consider:

1. the differences between Australian and Chinese trade mark laws; and
2. registering your trade mark as early as possible.

If you have any questions about registering a trade mark in China, contact our trade mark lawyers on 1300 657 423 or fill out the form on this page.

Frequently Asked Questions