The China Experts: Kristina Koehler-Coluccia on Trademark Hijacking and Why Registration Cannot Wait
- 4 hours ago
- 7 min read
This episode of The China Experts breaks the usual format. Instead of an outside guest, Kristina Koehler-Coluccia is on the receiving end of the questions, put to her by Claire, Woodburn's marketing lead, and the subject is the one that clients ask about most and act on least: trademarks. It is also the episode where Kristina tells her own two trademark stories, one of which cost her three months and a company name.
Who is Kristina Koehler-Coluccia?
Kristina Koehler-Coluccia is the host of the Thrive in China podcast and The China Experts series, and a Hong Kong born European with more than twenty years of experience helping foreign investors enter the China and Hong Kong markets. She has been on both sides of the trademark problem: her previous company lost its marks to a hijacker and had to rebrand, and Woodburn itself was refused a design mark. Both stories are told here in full, which is what makes this a more useful episode than a standard explainer.
What this episode covers
The cease and desist that arrived on a public holiday, fourteen days too late to stop
Why Woodburn's own logo was refused, and why the company kept using it anyway
The four decisions to make before anyone files anything on your behalf
Realistic timelines and costs in China and in Hong Kong
What a trademark search does and does not tell you
The Customs recordal step almost everyone forgets, and the export that got halted
Why manufacturing in China counts as using your brand in China
When to file, which is earlier than almost everybody thinks
The email that arrived on a public holiday
Kristina's first story is from her previous company, a corporate services firm, where trademark registration was not treated as a priority because there were no products and no consumer marketing. Four or five years in, the company finally started the process. On 1 May, the Labour Day holiday, she opened her laptop on the sofa and found a message from a stranger telling her to stop using her own brand assets in China, because the marks now belonged to him.
He had filed fourteen days before they did. China awards the mark to whoever files first, not whoever used it first, so the timing was decisive. Buying the marks back was theoretically possible, but there was no clear way to value a brand asset at the time, no telling what number he would name, and no budget in a small business for millions of renminbi. So they rebranded.
That is the part worth dwelling on. Rebranding meant the website, every piece of marketing material, all the service agreements, all the collateral, and telling every client the company had changed its name. It took three months of her time, which is three months not spent growing the business. The registration itself would have cost a few hundred US dollars.
Why Woodburn's logo was refused
When Woodburn was founded, Kristina made trademark filing the first action rather than the last. The team secured a company name and a matching domain, then filed the brand assets, and discovered that the WB design mark closely resembled a registered Warner Brothers design mark, along with three or four other similar WB marks already on the register.
They filed anyway. The application was refused, as expected, but two things came out of it. First, on second opinions from IP counsel, Woodburn was confident it could continue using the design commercially because the industries and sectors are entirely different. Second, registrations run for ten years, so there is a point in the future at which the position can be tested again. Her point is that a rejection is information, and a filing that fails still tells you exactly where you stand.
How registration actually works
There is no online self-service route in China of the kind you may be used to at home. Before anyone files for you, four things need deciding.
First, which brand assets you are actually protecting. A word mark is the name; a design mark is the logo. They are separate registrations, which matters later, because a company can lose one and keep the other. Second, the classes. There are 45, roughly half for goods and half for services, each with subclasses, and the fastest way to get this right is usually to take your home jurisdiction registration and use it as the template. Third, the owner. There is no requirement for a Chinese company to hold the mark; a UK, US or Hong Kong entity can own it. Fourth, appoint a trademark agent and sign a power of attorney so the filing can be made.
On money and time, Kristina is deliberately blunt. Registration costs a few hundred US dollars per mark, which she asks listeners to weigh against the value the asset will carry in the market. In Hong Kong the process runs roughly six to nine months; in mainland China a little over a year, around twelve to thirteen months. Everything before submission is on you, and depends entirely on how quickly your own people can agree the four decisions above. If you are also putting an entity on the ground, this work should run alongside China company registration rather than queue behind it, and the filing itself is what trademark search and registration in China covers.
What a search tells you, and what it misses
A search before filing shows similar marks in the classes you care about, and your agent will usually give you a probability of success. It has one significant blind spot, which Kristina experienced directly: an application filed a fortnight earlier had not yet appeared in the record, so the search came back clean on the mark that had already been taken.
Her advice, which cuts against how most people read a low probability score, is to file anyway. A few hundred dollars buys you a definitive answer, and a refusal tells you what your options are. Not filing tells you nothing at all.
Registration is not the finish line
Owning the mark only matters if someone is watching. Kristina is candid that she does not monitor her own marks, on the basis that it costs money and she is not willing to recruit in China for a role that does nothing else. For consumer brands in a market with a counterfeit problem, she takes the opposite view: monitoring is close to essential.
Two examples make the point. Her old company could not register a design mark because it contained a Chinese geographical character, which is not registrable, so when a competitor lifted the same logo and changed the colour from navy to red there was no legal remedy at all, for either side. And a client making baby wraps, a product nobody can patent, found that her differentiation was the label, and that a supplier was cutting the labels off damaged goods and selling the product unbranded through an online shop.
Enforcement is available but not cheap. Specialist firms handle monitoring and enforcement, and enforcement in practice means police raids on a warehouse or supplier. The question to answer first is what the infringement is actually costing you in brand damage or quality perception, because that is what justifies the spend. Companies that want someone in market watching over brand and partners before they have an entity can put that person on an employer-of-record contract in the meantime.
The supplier who shut a business down
The strongest case study in the episode involves a client who only manufactured in China and sold nowhere near it. They had over a hundred suppliers, fell out with one, and that supplier registered their brand assets as a revenge tactic. Then it did the step most people never think about and recorded those marks with the Customs authorities.
The consequence was immediate and severe. A later shipment from a completely different supplier was stopped at Customs and refused permission to leave China, because the goods carried marks the exporter had no right to use. Anything unbranded, in plain packaging, went out normally. Everything carrying the logo did not. The business was effectively halted for something between three and five months while the client took the supplier to court for bad-faith registration, which required the supply contract, evidence of why the relationship was terminated, lawyers and time.
The lesson is the one the client had missed entirely. If your product is made in China, your brand is being used in China, whether or not you ever sell a unit there. And the Customs recordal is a separate application from the trademark filing, made with the Customs authorities after the mark is registered, which is why it is so often skipped.
When to file
Kristina's answer is uncomfortably early: the moment you decide you intend to be a global brand, not the moment you decide to enter China. By the point of entry it may already be too late.
Her example is a cosmetics brand that came to her ready to file but waiting on local government funding to cover the cost. The funding took six months. In that window, with no China marketing of any kind, the brand's global profile rose through overseas brand ambassadors and an article in a cosmetics trade magazine, and an individual registered the mark. She makes the same point about a conference of Scottish brands in Edinburgh whose route to market was building awareness among Chinese students studying locally. If you are deliberately marketing to Chinese consumers in your own country, you are already exposed.
Where the English name is gone and buying it back is unattractive, brands often respond by creating and registering a Chinese name instead, which then changes the packaging and everything downstream of it.
The part that stings
Kristina closes on something more pointed than the usual advice. When a hijacking happens, the instinctive reaction is to blame China and walk away, and that reaction is amplified by everything else people read about the country. Her position is that this is the wrong conclusion. The system is public, it is first to file, and the party who did not file is the one who left the door open.
She also pushes back on the claim that nothing is being done. There are now specialist IP courts where a bad-faith registration can be challenged with evidence, e-commerce platforms are required to verify brand ownership before a seller can open a shop, and those platforms run IP hotlines that are staffed in multiple languages, so an English-speaking owner can report an infringement directly.
Watch the full interview
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