In China, it works a little that way with trademarks. The country does not recognize trademarks registered in other countries. Unscrupulous Chinese then register a brand and sell it back to its legitimate owner.
That makes it tough for businessmen in the United States and Europe to do business with China. The European Chamber of Commerce did a survey in 2014 to solicit opinions regarding business confidence in China. One in four of the European member companies said intellectual property protection was one of the top three business challenges in dealing with China. The prospect of experiencing piracy and copycatting of their brand names, logos, etc., is a major problem, they said.
Catherine Zang, of the Deacons law firm in Hong Kong, offered suggestions about how businesses in other countries can protect their interests when dealing with China:
Don’t assume that since you have registered your trademark at home that your intellectual property will be honored abroad. China’s State Administration for Industry and Commerce, which regulates commerce in that country, does not recognize other countries’ trademarks and if you resort to legal action, it will follow its own laws, making you very vulnerable. Make sure you purchase a trademark in China.
China’s Trademark Office has a ”first to file” policy and generally awards registration to whomever files first, whether or not there is proof of ownership. That gives trademark hijackers near carte blanche in picking up trademarks and selling them back to hapless owners. If your company’s name or logo is hijacked, it may be impossible for you to do business, since you won’t be recognized as being the owner. You could face legal action for trying. Buy your own trademark from China to prevent this behavior.
China passed an amendment to its trademark law this year requiring that applications “follow principles of honesty and good faith,” but it isn’t clear that this will have much impact on the piracy.
If your company is having a product manufactured in China and your intellectual property is stolen, it may be impossible for you to export your goods out of that country.
Zheng suggests paying money up front to register your trademark in China, rather than fighting the expensive battles if it is compromised. Hire a lawyer and work through one of the many trademark agencies in China. Research your brand or logo to be certain it has not already been taken. Decide if you want to retain your English-speaking trademark or create a new one using Chinese characters. Having both offers more protection and flexibility. Furnish agents with ample corporate documentation they can use to prove who they are and their association with you. Agents should have power of attorney to represent you in China.
China follows the World Intellectual Property Organization’s Nice Classification, which identifies 45 classes of goods and services. They want you to be product-specific and required that you register your classification. The system is complicated by the fact that you must register in all the possible classifications. For instances, shoes also could be considered clothing. If you are not specific, your logo could be grabbed if you fail to register in all the relevant categories.
If everything seems to be in order, the CMTO will publish your mark and then allow three months for formal opposition. If there is none, you proceed to registration. In about four months, you will receive a registration certificate.
