How to Protect your Product from China Counterfeiting with 360° Trademark Protection

When American and European and Australian companies would come to my law firm for China trademarks to protect their brand names from Chinese copycats, we would tell them that applying for such a trademark would take about a week, but actually getting that trademark could take more than a year. We would then say that until they actually get their Chinese trademark we would be pretty much powerless to stop companies in China from using their brand name. Most didn’t bat an eye at this

E-commerce has changed that, such that now when one of our China trademark lawyers tells a client that securing their China trademark will take a year, those who are selling their product online (which these days is almost everybody) push back and want to know what to do in the meantime to protect against copycats.

Our response, simplified a bit, is to say that they need to focus on “building IP walls outside China.” So for example, if they are selling their product in the United States and in Spain (where I am right now, having just attended a conference put on by our Barcelona lawyers) they should focus on protecting those two countries. The way to do this is to, among other things, secure trademarks in those two countries as quickly as possible.

Though a U.S. and a Spain trademark will not, technically, do a thing in terms of trademark protection in China, it can still be valuable in getting offending ads taken down off Chinese websites such as Alibaba. If “your” product shows up on Alibaba and you have no registered IP, the odds of your getting Alibaba to take it down from an Alibaba website are slim. If your product shows up on Alibaba and you have a registered Chinese trademark that is being infringed by something on an Alibaba website, the odds of your getting that offending ad taken down from Alibaba are good. If you have a Spain trademark and there is an ad on Alibaba clearly targeted at Spain that infringes on your Spain trademark, your odds of getting that ad taken down from Alibaba are not bad, which is a whole lot better odds than if you did not have the Spain trademark at all. The same holds true for the United States.

Of equal importance though is that if you have a United States trademark on your product you can use that trademark to try to keep the offending product from China from reaching the United States. You can do this by working with US Customs and Border Protection, which is authorized to block, detain and seize incoming products that violate U.S. intellectual property rights. The EU and Spain have similar procedures.

One of the best ways to get US Customs on your side to block incoming infringing goods is to secure a registered US trademark and then record that trademark with US Customs and Border Protection. If you record your trademark with US Customs, it will go into its database and if US Customs spots incoming product that infringes on a trademark in its database, it will usually not allow the offending product to go through customs and it will alert you to its arrival. The notice to you from US customs will usually include the names and addresses of the manufacturer, exporter and importer.

And all this for the low low cost of around $200. Once you get your China trademark, you should consider registering that with China Customs to get that government agency working for you on the China side to help prevent infringing product from leaving China in the first place. See How To Register Your China Trademark With China Customs.

For effective IP protection, think 360°.

We will be discussing the practical aspects of Chinese law and how it impacts business there. We will be telling you what works and what does not and what you as a businessperson can do to use the law to your advantage. Our aim is to assist businesses already in China or planning to go into China, not to break new ground in legal theory or policy.