How to protect your trademark in China

By David Gao, Attorney at law

When you start your business in China, whether by exporting goods to China, or providing service in China, or set up a company in China, you need to consider how to protect your trademark or brand in China beforehand. The following are some tips from David Gao, a China based lawyer on the trademark protection when you consider to expand your business into China.

Trademark registration: establish you rights on your brand

The registered trademark in your home country can not be automatically protected in China. To establish your right, you need to register your trademark with China Trademark Office (CTMO). This is the precondition for your trademark to be legally protected in China. A trade mark registration can give you access to more simple and inexpensive enforcement options than otherwise available, including access to criminal remedies against counterfeiters. Without registration, enforcement is still technically possible under China’s laws and regulations on the basis of unfair competition, but the protection under such laws is much less predictable and normally more costly.

Legal actions on counterfeiters or infringers

1. Civil action:
Civil suits are often used in cases of "look-alike" infringement or in complex cases when administrative authorities are unable to make a determination of infringement. The civil suit is also particularly useful in cases when the defendant is an established enterprise from which damages can be collected.

2. Raid action by administrative authority
Often used in cases of clear infringement or pure counterfeiting, such as exact copies of trademarks or brand names, many companies find raids by the local government department arefaster than civil or criminal suits. Administrative actions are useful for halting production lines and seizing large quantities of product, and local administrative bodies have the authority to impose fines and destroy infringing goods.

3. Criminal action
If the counterfeit product is large enough, the company may file a criminal case with the local police authority for a criminal case, or after the administrative action, request that cases be transferred from administrative authorities to China's police, the Public Security Bureau (PSB). When implemented, criminal investigations and prosecutions can be effective deterrents, particularly since administrative bodies cannot jail offenders and administrative fines are often inadequate.

4. Negotiation for licensing agreement
In some cases, if the infringer is large, after the fighting, the trademark holder and the former infringer may reach agreement on a trademark licensing agreement. Under such agreement, the trademark right holder can collect licensing fees from the licensees.