Trademark protection in China. Go local if that is your only option.

My views on trademark protection have evolved somewhat over the past year. I used to advise small companies that were sourcing in China not to worry about their IP because I know their budgets, know how expensive IP protection can be and I know that most trademark squatters in China set their sights on big companies, not small companies who do not have established brands and who, in many cases, are just starting out.

But now whenever I speak to a prospective or current client I always qualify my advice not to worry about IP protection with the caveat that they should seek trademark protection in China as soon as they can afford it. In doing this, I sound like my old dentist Dr. P who always told me not to worry about the problem tooth he had identified but to get it fixed as soon as I had the means. So for two years I didn’t do anything, had no problems with the tooth and then I got it fixed as soon as my budget allowed it. No regrets and I sleep better at nights now.

Usually I encourage companies to use a western IP law firm if they decide to register their trademarks in China. The reasons are two:

1.) Trademark registration can be tricky and if not done correctly your trademark may still be exposed even after you have registered it. For this reason you want to use a law firm where there are no language and or cultural barriers ( never to be discounted in China).

2.) It is possible to do due diligence on a law firm in your own country. Using a firm in China might be risky simply because you really have no way of knowing if they are reputable or not.

So up until now I have not advised clients to use local Chinese law firms for IP protection in China. But recently I have changed my view, thanks to one of my clients.

My client filed his trademarks in China and he chose to go through a law firm in Beijing, against my advice. The cost he paid was about one-third of what he would have had to pay had he gone through a western law firm. He just got notification stating that his trademark application has been filed in China. NB this is simply notification of the filing and not the acceptance, notification of which can take up to two years. I reviewed the documents sent to him by the law firm and they look legit, seals and all ( though I am no expert on this by any means). And my thought after looking at everything was The fact that he did this and now has some documentation in China for his trademark is a good thing. If something should happen later and ownership of his trademark is disputed then at least he will have documentation to show that he acted in good faith

So the advice I am giving now is to register your trademarks if you can afford to do so. That has not changed. But if you cannot afford a Western IP law firm that handles these filings in China regularly, then look into using a Chinese law firm. Just try to learn a little about them before you do anything.

But doing something is better than doing nothing.

Here are some more posts on protecting your IP in China

Non Disclosure Agreements NDAs
Protecting your IP
The cost to register a patent in China

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