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Trademark registration in China is not enough – far reaching strategy is crucial

Proper trademark registration in China is crucial and it must be done correctly, in a comprehensive and timely manner. A trademark registered in one country doesn’t automatically grant protection in another. Brands must register their trademarks in every country they operate in, especially in jurisdictions like China, which follow a “first-to-file” system. 

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Particularly in China, registration alone is not enough to protect a company’s intellectual property and brand. Foreign companies operating in the country should have a far-reaching strategy that includes trademark registration with customs, control of suppliers and effective monitoring of online and offline markets, among other actions. 


Trademark registration with customs 


An important step to protect a trademark against counterfeited products exported from China, is recording the registered trademark with customs authorities.  



Once recorded, Chinese customs adds it to their system and watches for unauthorized use of the mark on outbound shipments of goods. 


A company must present the necessary documents, such as the trademark registration certificate, to the General Administration of Customs to record their trademark. It is important to specify the classes of goods that need to be monitored.  


In key port locations, such as Shanghai, Shenzhen, and Guangzhou, where many counterfeited shipments originate, communicating with customs authorities is beneficiary. Explaining how to differentiate the real product from the fake one, as well as providing contact information where they can call in case of questions about the goods, can also be helpful. 


Marketplace 


No matter how many registration certificates a trademark has, the company who owns it has the main responsibility to protect it. Monitoring counterfeiting activity regularly in both online and offline markets is essential.  


Chinese authorities simply do not have the resources to deal with every case of counterfeited merchandise, nor are they familiar with the particulars of every brand.  


Foreign companies should have a plan in place to monitor the online and offline markets where their products are sold. Some of the most important online platforms to watch in China are Taobao, JD.com, Pinduoduo, and social commerce apps.  


It is recommended to regularly do online searches of the brand in both English and Chinese to identify illegal sales.  


Another step is to visit in person trade fairs, wholesale markets, factories, and locations where counterfeits could originate. 


Gathering evidence, such as photos and purchase records, can be helpful when starting legal action. Combating counterfeiting is an ongoing process, so persistence is key.  

 

Legal Action  


Foreign companies should consider getting lawyers involved as soon as possible when counterfeiting activity is confirmed.  


Legal action in China can be costly and time-consuming, and companies should evaluate if it is worth it depending on the size of the infringement. For minor or one-off infringement issues, firing off takedown requests or cease and desist letters may be sufficient. 


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In cases where there is widespread counterfeiting across multiple online and offline channels, lawyers can gather evidence, identify major players in the counterfeit supply chain, and pursue legal action, such as civil litigation or administrative raids.  


When counterfeiting is rampant, traceable to organized operations, and risks significant damage to the brand or revenues, starting legal action is the right move.  


Lawyers are also critical for reinforcing intellectual property protections in China. They can apply for preliminary injunctions, record the IP with multiple authorities, and push for cases to be transferred to specialized IP courts.  


This strategy combines enforcement with strengthening legal defenses. 


Destination Markets 


Chinese custom authorities can help protect against the export of counterfeited goods. But the system is not perfect. An additional step is to establish the same kind of protection to guard against the import of counterfeits into other markets.  


In the United States, a company can record a registered U.S. trademark with Customs and Border Protection (CBP). This can be done in every country where the company exports its products and in key markets where the trademark should be protected.  


Suppliers 


Often, the suppliers are responsible for intellectual property infringements. In some cases, this might reflect a purposeful decision by management; in others it may be due to a rogue employee. Companies should keep a close relationship with suppliers, communicating and visiting them regularly or hiring someone trustworthy to do it.  


Additional protection 


Brands should consider registering not just their primary logo or brand name, but also any variations, sub-brands, or key product names. This ensures a wider umbrella of protection. 


Trademark protection isn’t eternal. Brands must keep track of renewal deadlines to maintain their rights. Lapses can result in a loss of protection, making brands vulnerable to infringement. 


Having solid documentation on your intellectual property is just as important as the IP itself. This documentation proves ownership, outlines rights and is essential during legal disputes. 


For brands operating in partnerships or joint ventures, it is essential to have clear documentation on who owns what. This prevents potential disputes and ambiguities in the future. 


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Companies should maintain a consolidated and updated portfolio of all their intellectual properties. This should include registration certificates, renewal documents, and any correspondence related to IP rights. 

If the brand or any IP elements are licensed to other entities, a company must ensure those agreements are ironclad, with clear terms on usage, duration, territories, and revocation clauses. 


Registering and protecting trademarks in China is a complex process. It requires extensive effort and diligence, but thoughtful IP protection enables brands to maximize their integrity and reap the full value of their intellectual property in China. 


Risks can be minimized and sometimes even avoided if they are confronted early and with advanced preparation. 



 

Woodburn Accountants & Advisors is one of China’s most trusted business setup advisory firms.


Woodburn Accountants & Advisors is specialized in inbound investment to China and Hong Kong. We focus on eliminating the complexities of corporate services and compliance administration. We help clients with services ranging from trademark registration and company incorporation to the full outsourcing solution for accounting, tax, and human resource services. Our advisory services can be tailor-made based on the companies’ objectives, goals and needs which vary depending on the stage they are at on their journey.

 

Talk to an expert


Schedule a 30-mins complimentary, no-obligation call to see how Woodburn can help you.  

Book a call with our Head of Business Advisory - Kristina Koehler-Coluccia. In this free discovery call we will discuss your Greater China strategy, business plan, market entry and growth. Topics we can advise on include:

  • Business Advisory

  • Trademark Registration

  • Employer-of-Record 

  • Company Formation

  • Ongoing Administration Services

  • Operational Compliance

  • Human Resource and Recruitment

  • or any other business-related questions.

Our calls are automatically scheduled via Zoom - or via Teams, WeChat or WhatsApp upon direct request. 

Our advisory calls are available from Monday-Friday from 8am to 5pm CEST and Wednesday until 9pm CEST (for those based in the Americas).

 



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Woodburn Accountants & Advisors is one of China and Hong Kong’s
most trusted business setup advisory firms

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