You registered your trademark in China, meaning congratulations are in order for having taken this critical step to protect your intellectual property. Now, how do you leverage your trademark registration for maximum effect? Here are some tips:
1. Record Your Trademark with China Customs
Recording your registered trademark with China Customs is an important safeguard against counterfeit products being exported from China. When you record your trademark, China Customs adds it to their system and watches for unauthorized use of the mark on outbound goods.
To record your trademark, you will need to apply to the General Administration of Customs along with required documents like your trademark registration certificate. Be sure to specify the classes of goods you want them to monitor.
It can also be very helpful to follow up by meeting with Customs officers, especially in key port cities like Shanghai, Shenzhen, and Guangzhou where counterfeits often originate. Brief them on your brand, how to distinguish authentic products, and provide contacts they can reach out to if they have any questions or seize suspect goods.
2. Monitor the Marketplace
While recording with Customs provides a useful layer of protection, the reality is that brands must still be proactive in monitoring for counterfeit activity themselves. Law enforcement agencies in China simply do not have the resources or familiarity with each brand to spot and deal with every instance of counterfeiting.
Put together a plan for regularly searching both online and offline markets where your products are sold. Key online platforms to monitor in China include Taobao, JD.com, Pinduoduo, and social commerce apps. Have someone search for your brand name in Chinese and English to uncover illicit sales. Offline, visit trade fairs, wholesale markets, factories, and anywhere else counterfeits could originate.
Document instances of counterfeiting with photos and purchase records. Combating counterfeiting is an ongoing process, so persistence is key. The goal is to gather evidence and determine the source so you can take legal action.
3. Lawyer Up
If counterfeiting activity is taking place, it is usually advisable to get lawyers involved as soon as possible. However, understand that legal action can be costly and time-consuming, so make sure the scale of the infringement warrants it. For minor or one-off infringement issues, firing off takedown requests or cease and desist letters may be sufficient.
But if you are seeing widespread counterfeiting across multiple online and offline channels your lawyers can help gather evidence, identify major players in the counterfeit supply chain, and pursue legal action like civil litigation or administrative raids. Going the legal route makes sense when counterfeiting is rampant, traceable to organized operations, and risks significant damage to your brand or revenues.
Lawyers are also critical for reinforcing your intellectual property protections in China. They can apply for preliminary injunctions, record your IP with multiple authorities, and push for cases to be transferred to specialized IP courts. This combines enforcement with strengthening your legal defenses.
4. Protections in Your Destination Markets
As discussed above, recording your trademark with China Customs will serve to establish a protective net against the export of counterfeits. However, this net is not perfect. The good news is that you can establish the same kind of protection to guard against the import of counterfeits into your markets. In the United States, for instance, you can record a registered U.S. trademark with Customs and Border Protection (CBP). At a more basic level, you will want to make sure that you have protections in place for your key intellectual property in important markets for your products, giving you second bites of the apple if counterfeits enter them.
5. Keep an Eye on Your Suppliers
More often that anyone would like, it is a brand’s own suppliers that are responsible for intellectual property infringements. In some cases, this might reflect a purposeful decision by management; in others it may be due to a rogue employee. Do not let your supplier’s facilities become a black hole. Visit often, and if you cannot, hire someone trustworthy to do it. Along the same lines, establish (and enforce) product security guidelines to help foil malfeasants.
6. Conclusion
Registering and protecting trademarks in China is a complex but critically important process for brands. By recording trademarks with China Customs, monitoring the marketplace, employing legal counsel at the right times, safeguarding your intellectual property in destination markets, and keeping tight oversight on your supply chain, companies can execute comprehensive strategies to defend their trademarks. It requires extensive effort and diligence, but thoughtful IP protection enables brands to maximize their integrity and reap the full value of their intellectual property in China.
