Handle with care: the dos and don'ts of protecting your brand in China.

• Author: Mangelson, Michael
• Position: Legal Brief

China is the fastest-growing consumer market in the world, which is not hard to believe given its population of 1.3 billion and growing middle class. This can be a great opportunity for a U.S. company with an innovative product and a strong brand. Protecting that brand in China, however, can be a problem if not handled carefully.

Secure Your Trademark

The first mistake is assuming that China's system for protecting trademarks is similar to the U.S. system. Unlike the "first to use" system in the United States, China is a "first to file" jurisdiction. This means that an individual or company that first files a trademark in China will have rights to prevent others from registering and using the mark in China, regardless of whether it was first to use the mark there. You must file early to ensure proper protection. However, China is a member of the Paris Convention, so an application filed in China within six months of the U.S. filing can claim priority from the date of the U.S. application.

You can use the traditional approach of filing a Chinese national application with the China Trade Mark Office (CTMO) through local counsel or file online through the U.S. Patent and Trademark office designating China under the Madrid Protocol. Both approaches have their pros and cons. The Madrid Protocol is generally less expensive if you're designating multiple countries in the application. However, if you anticipate any complications in prosecuting the application, you should consider the traditional approach because local counsel is required to respond to CTMO Office Actions, and the CTMO currently allows only two weeks to respond.

Chinese trademark registrations also use a unique subclass system for categorizing goods and services, which is more detailed than the international class system used in the United States. If you're not careful in selecting the proper Chinese subclasses, you may discover that your registration doesn't cover your product. This was Apple's mistake when it first registered the iPhone mark in China. It registered the mark in International Class 009 for electronic goods, which would be sufficient in the U.S.to cover phones, but the application listed Chinese subclass 0901 (computers and software), which doesn't include phones. A Chinese company later registered the mark in subclass 0907, which includes phones, so Apple, after losing an expensive opposition contest, ended up buying the registration from the Chinese company.

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