Registered trade mark protection is granted only for the jurisdiction(s) that you obtain registration in. In other words, for any brand owners considering or currently operating in markets overseas, it is important to seek protection of your trade mark(s) in each jurisdiction you wish to operate in. It can also be strategic to consider protection in particular countries, whether it be countries in which the trade mark is applied to products during manufacture or, alternatively, where the goods and services bearing the marks are advertised.
There are two methods through which you can seek protection of your brand overseas.
- A direct application in each of your countries of interest.
- A Madrid Protocol application. This is an international system, whereby a brand owner in a member country of the Madrid Protocol can seek protection of its trade mark(s) in any of the other member countries, through a centralised, streamlined and cost-efficient process.
Generally speaking, there are two kinds of trade mark systems that exist – “first-to-use” and “first-to-file”. Countries, like Australia, that operate on a “first-to-use” basis, afford rights in a mark to the first entity to use (or file an application for registration of) a trade mark.
China – “First-to-File”
China operates on a “first-to-file” basis. Therefore, the first entity to file an application seeking protection of a trade mark will have the best claim to it. Accordingly, it is important to consider your options for protection of your brand in China well before undertaking any operations there.
There has been an exponential increase in trade mark applications in China for many years now, such that by 2020, there were in excess of 28,000,000 trade mark registrations in force. In 2020 there were 17,198,300 trade mark applications filed, globally, more than 54% of which occurred in China alone. That equates to 9,345,757 Chinese applications – which was an almost 20% increase on the number of applications filed in China in 2019. By comparison, the next most popular country to seek protection of trade marks in, was in the United States of America. However, that still totaled less than 10% of the number of applications in China, at 870,306 applications.
As a result of the significant rise in trade mark applications in China, its trade mark law is constantly developing to meet current requirements of the system. The most recent amendments to its laws were in 2019 and included tougher penalties for any entities that become involved in “trade mark squatting” – a practice of seeking registration of a third party’s mark(s), with the intention of selling it to that party for a profit.It is important to consider seeking protection for your brand in China as early on as possible. For assistance in doing so in China or anywhere else, please feel free to contact me on +61 (3) 9020 3142 or another member of the Baxter IP team.