Our advice to any company doing business with China—even those that only manufacture there—is simple: register your trademarks in China before you do anything else.
China operates under a “first to file” trademark system. That means the first party to register a trademark in China owns the rights to it. I repeat: in China, the first to register gets the trademark.
Don’t Count on Famous Trademark Protection
Yes, there’s an exception for well-known or famous trademarks, but unless you’re Coca-Cola, it’s risky to rely on a Chinese court declaring your brand “famous” when China trademark registration is fast, inexpensive, and far more effective. Most law firms charge under $2,500. A legal battle to prove fame? Expect to spend at least $50,000—and the odds aren’t in your favor.
Ferrari’s China Trademark Battle: A Cautionary Tale
Ferrari, the world-renowned carmaker, recently proved the point.
In Ferrari is Famous, But Is the Horse Too?, the China Business Law Blog discussed how Ferrari lost the right to use its horse logo in China. After more than a decade of legal disputes (does anyone think that cost under $100,000?), the Beijing First Intermediate Court ruled that Ferrari’s iconic horse was not sufficiently well-known in China to qualify for famous trademark protection.
In 1996, White Clouds Sports Merchandise filed a Chinese trademark application for a horse logo to use on apparel. Ferrari filed a timely opposition, arguing consumer confusion. But the China Trademark Office rejected Ferrari’s claim, ruling that White Clouds had filed first.
Ferrari appealed to the Trademark Review and Adjudication Board, asserting that both the Ferrari name with the horse graphic and the horse image alone were famous trademarks in China. The board disagreed. Ferrari then brought the case to court.
In court, Ferrari argued that the horse logo was closely tied to its brand identity and that the Ferrari trademark was well-known globally, including in China. The court rejected the claim for three reasons:
- Ferrari failed to submit sufficient evidence of using the horse logo in China.
- China has a formal recognition process for famous trademarks, and recognition of the Ferrari name did not extend to its horse logo.
- The dispute focused on the horse design—not the Ferrari name. The two could not be combined to obtain broader protection.
The Takeaway: File Early, Protect Everything
The China Business Law Blog concluded with this practical takeaway:
“After more than ten years of trekking in the Chinese legal system, Ferrari got a disappointing verdict. Hopefully, Ferrari got something else too: a lesson to register its trademarks, [and] related trademarks as early as possible.”
Or, as my friend Dan Hull put it on his always entertaining What About Clients Blog, Dude, register your IP in China.
Or do you feel lucky?
Is This Still True? More Than Ever
July 19, 2025 UPDATE: This post was originally written in 2007 and has been cited numerous times since. We’re often asked whether it’s still accurate. Our answer: Yes—more than ever.
