Register trademarks abroad in advance, companies advised

Industry insiders suggested at a seminar on Jan 22 that Chinese companies register their trademarks abroad in advance and make better use of international protocols to build strong brands overseas.

"You need to register your trademarks in the jurisdictions where you plan to be, even if you do not plan to use them, prior to expanding into those markets," J. Scott Evans, president of the International Trademark Association, said at a press conference ahead of the seminar the association hosted in Beijing.

He suggested Chinese companies "have a long-range plan" for overseas trademark protection and "register in any bordered countries" around their manufacturing sites.

To register trademarks abroad as early as possible is a lesson some Chinese trademark owners learned from their experience with bad-faith registrations overseas.

Karen Law, a senior legal counsel at Alibaba Group, said the group once found two African companies using Alibaba and AliExpress, two brands of the company, to offer logistics and e-commerce services, without authorization.

"To be frank, until then I never thought I would register our trademarks in some small countries in Africa," Law told the seminar.

She added it is very common for a Chinese company to find its trademark already registered by someone else in an overseas market where it plans to expand. She suggested Chinese companies work out a global trademark plan in advance.

Nie Xudong, board director of Jiangsu Hengshun Vinegar Co, said his company should have set up a legal department 20 years ago to register trademarks overseas as early as possible.

Register trademarks abroad in advance, companies advised

Zhenjiang Vinegar Association, of which Nie's company is a member, learned in June 2010 that the Korean Intellectual Property Office had accepted a South Korean application to register Zhenjiang Vinegar's Chinese and English trademarks.

Nie said Zhenjiang Vinegar was "registered at China's national trademark office as a collective mark in 2005" and thus the Zhenjiang-based association filed an objection to the KIPO after it learned of the situation.

"With the help of trademark experts and government agencies, the association's objection finally won support from the KIPO and the previous application was rejected," Nie told the seminar.

Lyu Guoliang, deputy director of the World Intellectual Property Organization's China office, said the Madrid system for the international registration of trademarks is cost-effective for Chinese companies to protect their rights in overseas markets.

Lyu said as China is a member of the system, one can use the system if he or she is a Chinese national or domiciled in the country or has a real and effective establishment here.

The system, which is governed by two treaties, states on its website that it aims to facilitate protection of trademarks in multiple jurisdictions.

"Using the Madrid system for global trademark protection is much easier than employing agents in every country," Law from Alibaba said.

Participants in the seminar also said international trademark organizations including the International Trademark Association could help Chinese companies protect their brands abroad.

Yun Xuan, from Quality Brands Protection Committee of the China Association of Enterprises with Foreign Investment, said that organizations could provide trademark owners with first-hand information from experienced professionals and Chinese companies will have a stronger impact globally if they take an active role in such associations.

Law said Alibaba has had much help from the International Trademark Association as it updates related laws and regulations in many jurisdictions on its website and informs its members of the changes.

The association, headquartered in New York, has more than 6,500 member organizations including brand owners, law firms and nonprofit organizations from 190 countries and regions.