Top tips for IP protection in China
Melinda Upton and Edward Chatteron
Mon, 10 Dec 2012 1:00pm

Today BRR Media speaks with Melinda Upton, she's the Group Head of the Australian Intellectual Property and Technology Team with DLA Piper and joining her is Edward Chatterton, who's a Partner in the IPT Team based in Hong Kong.  Thanks for dialling in guys.

Thank you very much.

Thanks David.

Edward given the size and therefore the attractiveness of the Chinese market what's your number one tip for trade mark protection in China?

Thanks David I think the number one tip has to be that you have to file first.  Unlike a lot of trade mark jurisdictions China gives very little weight, if any, to unregistered trade mark rights like reputation or course of dealing.  And what this means in practice is that brand owners who don't file first, in the key classes which are of interest to them, are at risk of third party brand pirates stealing their brand.  Now this is a particular risk in China because it doesn't have a positive requirement for trade marks to be filed in good faith and probably the largest number of pirate trade mark applications of any country in Asia are in China.  Now the list of western brand owners who've fallen foul of China's first to file rule is long and is increasing.  A recent example is the French wine maker Castel, which has had to suffer the Chinese equivalent of its trade mark being registered by a competitor in China and then been on the receiving end of trade mark infringements for using that Chinese language mark in China.  And they've been involved in some very lengthy litigation which has put their brand in peril in China.

Looking more broadly to Asia Pacific, what's at the top of your list more broadly in the region?

I think more broadly than that a couple of things.  The first thing is I would say to any brand owner be sensitive to local cultural requirements, many brand owners assume that their brands will automatically have a resonance with local consumers in Asia, yet the reality is in many Asian jurisdictions English isn't widely understood, it therefore really pays to think carefully about devising a brand name in the local language using local characters which will have a resonance with local consumers.  The other point I'd highlight is ensure you file broad trade mark specifications which cover all of your key goods and services and any other goods or services which you wouldn't want a third party to obtain rights to.  Now bear in mind that many countries in Asia, including China, operate a system of sub classes within classes and that goods and services that are in different sub classes of the same class of goods and services will often not be considered similar.  Now this may seem very strange to a western audience, but for example in China clothes are in class 25 and hats are in one sub class within class 25 and gloves in another sub class.  That means there is a great risk of a third party seeking to register in another sub class if you haven't got every sub class within that class registered.

And just finally and looking back home in Australia, Melinda, are Australian start-ups thinking globally enough when it comes to protecting trade marks?

We are definitely advising more regularly those clients that are looking at expanding and who start up particularly from a regional perspective.  Really the internet is our portal to the rest of the world and it's here that most Australian start-ups will make the international leap, so it's also here that Australian start-ups are the most vulnerable, so the reality is if you're thinking online you should be thinking global in terms of your trade mark and IP protection strategies.  As more Australian start-up businesses break away from the domestic moulds they'll see the importance of global brand protections, and especially when they consider that the costs associated with protecting a trade mark are arguably significantly less than the cost of recovering your IP rights to your own brand in another country like China.  So the bottom line is it makes good commercial sense to get in as early as possible with your trade mark protection plan than to risk putting your intellectual property rights you know at risk to a third party.

Well some very valuable insights and thank again for your time today Melinda and Ed.

Thank you very much, pleasure.

Thanks David.

Thank was Melinda Upton and Edward Chatterton from DLA Piper.  Listeners if you have any questions for our interviewees on anything in this interview please send a message using the panel that's on your screen or you can otherwise email through to law@brrmedia.com and we'll forward your queries.