Chinese trade mark pirate ‘caught in the act’ on wine brands

Tuesday 21st January 2020
Article written by: Gareth Scarfe

A Chinese trade mark pirate appears to have been caught in the act of applying for trade mark registration of a huge number of New Zealand wine brands. The pirate applied to protect hundreds of trade marks covering wines and other beverages.

It is positive to see that the Chinese Trade Mark Office has rejected many of the applications at the outset. They seem to have identified that the volume of trade mark applications made by the pirate was suspicious and determined themselves that there was no reasonable way that the pirate could make legitimate use of all of them. The pirate may still challenge the Chinese Trade Mark Office’s rejection and some of the pirate’s applications are still pending. Wine brand owners are watching the matter awaiting the final outcome.

This can perhaps be considered a lucky escape by many New Zealand wine brands. Trade mark piracy is often not so flagrant, and had it not been for scale of the filing program, it is unlikely the Chinese Trade Mark Office (at least not on its own) would have considered the applications suspicious. A more moderate filing program by the pirate may have gone undetected until the trade mark applications were advertised by the Chinese Trade Mark Office, or possibly until the brand owners sought to use their brands in China and were sued for infringement.

What should businesses do to protect their trade marks in China?

The best course of action is to act before the pirates do. This is because it can be very difficult and expensive to obtain a trade mark registered by a trade mark pirate, and unfortunately pirating of trade marks in China is not uncommon.

Businesses that operate in China, or that plan to, should take a proactive approach and seek trade mark protection early, and definitely before unscrupulous parties may become aware there is a possibility that the business may want to extend its brand to China.

Businesses should consider registering their trade mark as a plain word and their chosen Chinese transliteration (if they have one) at least. The closest Chinese transliteration of their trade mark can also be considered, and so can a back translation (i.e. how the trade mark may be translated into English from a Chinese transliteration). Ideally, a trade mark clearance search should be conducted too.

Need more information?

For more information on how to protect your business in China, contact our China Desk team.

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