Looking to move your brand into China? Here’s our quick guide to protecting your IP in the process

Successfully exporting your Australian brand into the Chinese market is a challenging task and it requires a significant investment of time and resources, together with a well thought-out brand protection strategy.

Set out below is our quick guide to some high level issues to think about in the IP space if, like many, you’re looking at the opportunities presented by the Chinese market and thinking you’d like to get on board.

Part one: protecting your trade mark

China follows a “first to file” system for trade marks.  This means that the first person to file a trade mark application will generally have priority over a prior user of the mark in China and “pirate filings” are a real risk – so getting in early is crucial.

Importantly, you should seek registration of your English mark, the Chinese equivalent and any colloquial Chinese name by which your product is known.  Beyond the legal need for a Chinese trade mark, this is also preferential from a marketing perspective as not all Chinese consumers know foreign languages, and you will avoid inconsistent branding.  Importantly, be aware that a Chinese version of your English trade mark (and quite possibly a slang version) will exist, and you want to make sure that you own it.

Part two: getting the message out there (while following the rules)

Get familiar with China’s revamped consumer protection and advertising laws.  While a unique marketing strategy will be crucial to cracking the Chinese market, look before you leap and be aware of the updated regulations in this space.

The Chinese consumer law was updated in 2013, and an amended advertising law is set to come into effect in September 2015.  The updated laws are similar to Australian law in some ways, but there are some important differences to bear in mind which may have a significant impact on your brand strategy.  For instance, China’s consumer law contemplates liability for all persons involved in advertising which includes any false statements about human health or safety when promoting a product or service, from the advertising agents to any celebrities appearing in the ad.  Relatedly, product endorsements and testimonials will be restricted in relation to certain products.

Another interesting point of difference is the restriction placed on use of words such as “State-level, the highest-grade or the best” – so watch your use of superlatives!

Part three: controlling your image

An important consideration to bear in mind when it comes to making a (positive) impact on the Chinese market is how you’re going to control your image.  Will you be appointing an agent or distributor?  What kind of channels will your product move through?  Careful consideration should be given to whether and to what extent you will allow third parties to use your brand, and the restrictions you might want placed on that use.

Part four: getting the experts in

And, last but not least, seek expert advice when confronted with uncertainty!

You can also check out our King & Wood Mallesons Insight piece on protecting your intellectual property in the China market, or skip straight to the related video here.