Tom Duke,

Senior Intellectual Property Officer, British Embassy Beijing Intellectual Property Office

There is strong cooperation between the UK and China on trade marks. The UK Intellectual Property Office (IPO) and the State Administration of Industry and Commerce (SAIC) signed a framework for cooperation on trade marks in 2009. Under this framework we agree an annual work plan of detailed exchanges with experts travelling between the UK and China. Last year exchanges included discussions on procedures for examination of sound mark applications following the implementation of the revised Chinese Trademark Law. The amendment expanded protection for non-traditional trade marks in China.

Another frequent topic for UK-China exchanges on trade marks is oppositions, cancelations and other review procedures. In the UK we have a “mandatory counterstatement” system where if applicants do not respond to a notice of opposition then their application is automatically considered to be withdrawn. This helps save resources both for the UK IPO and also for users of the system. This is a helpful benchmark for China where the volume of applications is very high and there are a large number of oppositions made against suspected bad-faith applications.

This year we will continue to discuss oppositions, cancellations and other review procedures, including the criteria for providing cross-classification protection to well-known trade marks. Both international and Chinese companies have benefited from the development of the Chinese trade mark and legal systems over the past 10-15 years. Overall I do not see great differences between the experience of British companies in China and Chinese companies looking to develop their brands overseas. All businesses benefit from an effective system for protection and enforcement of trade marks.

China has an important role in the global economy as a major market and a significant manufacturing centre. This means that China is increasingly high on the list of priority countries for trade mark applications by British and other international companies.

The most common problem we hear reported by British businesses in China is pre-emptive, suspected bad-faith applications for marks developed internationally by British companies. This can cause serious difficulties for companies looking to trade and invest in China. The best way to avoid this of course is to apply for marks in China as early as possible. But for those companies that were pre-empted the opposition and cancellation systems are very important. We hope that provisions included in the revised Chinese Trademark Law will help provide protection from bad-faith applications for all businesses operating in China. Other problems include the interpretation of the international trade mark classification system in China, which can give a different scope of protection to other countries. In particular, this can cause problems for applicants using the Madrid system for international applications.