Do it now: Why you need to register your trade mark in China
4 min read
29 February 2012
China, the "workshop of the world", can make or lose you a lot of money. Here's why you absolutely need to register your trade mark in China now.
China is the choice for many UK companies when it comes to manufacturing goods and now accounts for almost a fifth of global manufacturing output
Yet while many UK companies are taking advantage of China’s cost-saving benefits, many are unaware that even if they do not wish to sell their goods in China, they should register their trade mark there or risk someone else doing it first.
Why register your trade mark in China?
It’s important to protect your brand from the outset. Your business stands or falls by its name and logo.
A good trade mark adds to a brand’s value making your brand stand apart from your competitors. Running a business without a registered trademark is a serious risk, as unless you have a trademark protecting your brand it is much easier for absolutely anyone to do business using your name.
If you don’t register a trademark, other businesses can more easily:
- Damage your reputation by offering goods or services that mimic your own but are of inferior quality,
- Start up under a similar name and poach custom from your established business,
- Register your trademark for their business and force you to rebrand. (A rebrand can cost a company thousands in design work, new stationary, vehicles and so on as well as losing the goodwill built up in your old name.)
A registered trade mark will allow you to bring an action for trade mark infringement against anyone trying to use your name for similar goods. This is important as it’s notoriously difficult and expensive to succeed in a “passing off” action if you only have an unregistered trade mark.
You can trade mark your name or the logo or both together as a single application. Each option gives a different degree of protection to your brand.
Back to our China example, if someone were to register “your” trade mark they will be able to stop you from using your brand in China as well as potentially blocking your product (with the offending trademark) from leaving China’s ports. Your company could then be held to ransom to free your own goods for export.
This is a growing problem for UK companies and it is not restricted to China. UK companies manufacturing anywhere outside the EU must ensure that they have registered their trade mark in the country of manufacture.
Registering a trade mark in a country outside the EU is a not an overly complex or costly process (for China they range on average from £400 to £800) and once your application has been made, it has priority over any subsequent applications, mischievous or otherwise. But note that it currently takes one to two years to register a trade mark in China.
Companies looking to trade mark in a number of countries can apply using the Madrid System for the International Registration of Marks, which is the primary international system for facilitating the registration of trade marks in multiple countries.
The Madrid system does not however create an “international” registration, as in the case of the European Community Trade Mark system, but rather it provides a mechanism for obtaining trademark protection in many countries around the world, which is more effective than seeking protection separately in each individual country or jurisdiction of interest. The Madrid system is administered by the International Bureau of the World Intellectual Property Organisation (WIPO) in Geneva, Switzerland.
If you have not taken the necessary steps to protect your brand, be assured someone else will.
Mark Kingsley-Williams is director at Trade Mark Direct.