As Australia's largest trading partner, the importance of
the People's Republic of China to the Australian economy is
beyond dispute. Yet despite this clear reality and an eagerness on
the part of Australian business to engage with China, many
Australian businesses fail to take the basic and essential steps
required to protect their trade mark rights in China.
This article identifies the key branding considerations for
Australian companies engaged, or intending to engage, in business
Know your limits
One of the more frequent mistakes made by Australian trade mark
owners is to assume that their Australian trade mark registration
provides a monopoly to use of that trade mark around the world.
Registration of a trade mark in Australia only grants the owner
of a trade mark a monopoly to use that trade mark in relation to
the goods and services listed in the trade mark specification in
Australia. Accordingly, if goods are manufactured or sold, or
services provided, under a trade mark applied in China, Australian
businesses should seek trade mark protection in China.
China is a first to register jurisdiction so seek registration
as early as possible.
Given that it can take years to obtain a trade mark registration
in China, it is crucial that Australian businesses that manufacture
or sell goods in China, apply to register their trade marks in
China at the earliest possible opportunity – ideally, prior
to commencing trade.
As some of the world's most well-known brands have
discovered, the consequences of failing to attain Chinese trade
mark protection can be significant and costly. Not only could a
business' entire manufacturing and supply chain be disrupted,
but a business could be prevented from using its trade mark in
Should a third party obtain registration of the trade mark in
China, the owner of the Chinese trade mark registration could
request that Chinese customs authorities seize and detain branded
goods that infringe their trade mark, preventing their import or
Australian businesses should also consider seeking trade mark
registration in Chinese characters. Many Australian businesses
assume that the trade marks that should be protected in China
should be the same (being in English) as those marks protected in
While in some cases seeking protection in English will be the
logical way to proceed if the business is manufacturing in China
and importing goods back to Australia, if the intention is to sell
to Chinese consumers, then seeking protection for a badge of origin
directed towards a Chinese audience is likely to be more productive
than seeking protection in English.
Although there are a number of different approaches to
formulating a trade mark in Chinese characters, the most common
transcribing the Chinese characters according to the English
pronunciation of the relevant trade mark
translating the meaning of the relevant trade mark or providing
a favourable meaning that consumers will ascribe to the
goods/services provided by the Australian business, or
combining the two methods to develop a wholly unique
Experience has established that if the owner of a product or
service does not provide a Chinese name for the trade mark, Chinese
consumers and the Chinese market will allocate a name to the goods.
If this is allowed to occur, a business may lose control over the
allocated name given it did not formulate it.
To avoid missing out on the significant growth and emerging
spending power of the Chinese middle classes, Australian businesses
should also consider whether products, marketing and advertising
literature is appropriately labelled so as to be understood by
For instance, the quality of Australian wine is especially
well-regarded in China which has led to many Australian wine
producers targeting Chinese consumers by including dual
English/Chinese labelling on the wines exported to China.
With the advent of China's revised Trade Mark Law scheduled
to come into force in May 2014, if your company is already engaged
or is soon to be engaged with China and has yet to seek protection
in the People's Republic, 2014 is the year to consider
protecting your trade marks in China.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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