Conor O’Sullivan, Shanghai Office, Bord Bia – Irish Food Board

If you haven’t registered your trademark in China, you could lose the rights to use it, potentially indefinitely.

This is because China operates a first-to-file system in which the first company to receive approval on an application owns the trademark, regardless of whether they are its creator. The applicant does not even need to demonstrate planned usage. It is a system open to abuse from so-called “trademark squatters”, and these squatters keep busy. The Chinese Trademark Office receives a quarter of the world’s trademark filings, and trademark violations account for nearly 70% of IPR infringement cases in China.

If your trademark has already been registered by another company, continuing to sell your product under that trademark would be a violation that leaves you liable to legal repercussions. Theoretically, it is possible to challenge for trademark ownership in court, either by proving deliberate intention to blackmail or that the brand was already well-known when the trademark was registered. In practice, China’s courts are notoriously hard to convince. High-profile losers in trademark disputes include Pfizer’s Viagra, Chivas-Regal and Castel Freres—the latter coughing up a $5.5 million fine for trademark infringement after losing a lengthy legal battle.

Chivas Regal has lost the rights to manufacture or sell tshirts with its trademark in China

A far more common resolution is to rebrand, or purchase the trademark back from the registered owner. Both can be costly. In comparison, the fees to register a trademark are minimal. Bord Bia has met with a number of companies in China offering this service for approximately €450-€650 per filing. Approvals are valid for ten years.

Should my company register?

Not every Irish company needs to register their trademark in China, but many should. Remembering that a trademark can be important for both trade and consumer focused companies, ask yourself:

• Can I foresee a future in which my company targets China?

• Does my trademark contribute to the success of my business?

If yes, consider registering. Even for companies with restricted budgets, getting minimal coverage for core brands could save a lot of headaches in the future. A three-year limit for non-use means that companies should only register their mark where it is foreseeable that they will use it.

Aim to register before you enter the Chinese market, and always file the application yourself—this prevents ownership ending up in the hands of a local partner.

If you would like to register your trademark in China, or have received an email from a company claiming to have registered your trademark already, contact conorrichard.osullivan@bordbia.ie in Bord Bia’s Shanghai office.