Protecting your trade mark treasure in China

In March 2021, the China National Intellectual Property Administration (CNIPA) proposed a plan to address trade mark piracy or squatting in China.

According to the CNIPA, the plan is intended to promote IP rights and foster an environment that lends itself to innovation and business by combatting, amongst other things, the malicious registration of trade marks for famous or well-known names, including the names of public figures, trade marks and events, including words or signs relating to tournaments, significant natural disasters and public health events.

OEMs manufacturing goods in China are all too familiar with trade mark piracy and the effect that a rogue registration could have on original goods being exported from China to other destinations for sale. China is a first-to-file jurisdiction, which historically made acting against such malicious trade marks filings difficult. Protection of well-known marks was also interpreted very narrowly and questionalble in circumstances where the marks were only applied to goods strictly manufactured in China for export.

The CNIPA’s plan is therefore a welcome development for brand owners the world-over. It is anticipated that the plan will be implemented in three phases over 2021 which envisages local IP offices investigating their records and reporting to CNIPA and the latter subsequently issuing fines to apparent malicious rights holders.

The plan, although positive, is still in its infancy and brand owners should be savvy in continuing to register their trade marks in China and seeking brand protection advice before entering unchartered waters.