One Federal Court decision clarifies what is considered as “authorised use” of a trade mark wherein the trade mark user is not the trade mark owner but a subsidiary of the owner’s company.
Understanding trade marks in China
China is one of Australia’s largest trading partners and is a popular jurisdiction for protection of IP rights. The Chinese trade mark system is highly complex and ever-changing. Here are several main points that need to be considered when filing a trade mark registration in China.
1. First to file trade mark system
The Chinese trade mark system employs “first to file” rule. The first person who files an application for a trade mark in China and successfully registers the trade mark becomes the trade mark owner. As such, filing a trade mark as early as possible is the most effective way to protect your trade mark in China.
2. Classification of goods and services
China uses the Nice classification of goods and services, but the classification system is further divided into subclasses. Items in different subclasses are generally not considered similar to one another. Therefore, when preparing a trade mark application in China, it is important to ensure relevant subclasses are covered. Our team is very experienced in class and subclass selection in China.
If you hold an Australian trade mark application or registration and would like to file a Convention trade mark application in China or a Madrid application designating China n, we strongly recommended that you engage a registered Australian trade mark attorney to make the filing, including a review of your filing particulars and amendment of the specification according to the requirements of Chinese legislation.
3. Chinese language trade marks
Chinese consumers prefer to use Chinese names for foreign brands. You may be advised by your marketing consultant that you use a Chinese translation or a transliteration of your English brand name when you enter China. To avoid the Chinese brand names being taken by others, it is wise to protect them with trade mark registrations when the brands are adopted. Failing in protecting the Chinese names of the brand soon enough may result in the names being registered by manufacturers, distributors, or even your customers, and their registrations could block your marketing and business in China.
In selecting Chinese names, it is important to consult with trade mark attorneys about the various meanings of the Chinese characters that you intend to use. The Baxter IP attorney team can help advise around choice of Chinese brand names and which may be suitable in a Chinese context.