International Law

China Trademarks. Do You Feel Lucky? Do You? Part III

By Dan

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?

Full post as published by China Law Blog on February 16, 2011 (boomark / email).