Trademark registration in Asia – Since many Australian companies are turning to an Asian market for product production, trade mark registration in Asia is becoming increasingly popular. Over the past decade there has been a growing number of Australians filing trade mark applications in Asia, and in particular, in China. Recent figures published in the Australian Intellectual Property Report 2013 reveal that there has been a dramatic shift in the market focus away from countries such as New Zealand, US and Europe, and towards registration in Asian countries.
The basis of the Chinese system is that the first person to file a trademark obtains the trade mark rights. This contrasts with Australia, where the person who uses the trade mark first is entitled to register; we recognise prior usage rights. In China, prior use of a trademark does not afford protection, so applications need to be filed as early as possible and preferably before you enter the market. Registration can be done with the Chinese Patent Trademark Office, or by extending an existing registration under the Madrid protocol.
Due to the ‘first-to-file’ rule in China, a party unrelated to an Australian trademark holder, could and would be well within its rights to register a trademark that is identical or similar to that Australian trade mark. Once a third party has attained registration in China, the owner of an identical or similar Australian trade mark would have no right to use or to register that trademark in China. If someone attempts to use an already registered trade mark in China not only could they be prevented from using it, but the owner of the registered Chinese trade mark could request that Chinese customs authorities seize and detain branded goods that infringe their trade mark, preventing their import or export.
It is crucial to be aware of the IP risks, and safeguards you can take if you are engaged in product production in Asia. Where a trade mark is applied to the goods in China as part of the manufacturing process, the entire manufacture and supply chain could be disrupted.