The Sydney Morning Herald article of 16 June 2012 reporting on misappropriation of HILL OF GRACE brands and labels of the Henschke wine family illustrates that Australian traders continue to face risk of brand piracy.
The reasons for seeking registration of your marks earlier rather than later
The Chinese government is tightening legislation around trade mark rights so as to protect foreign trade mark owners. For example, the Chinese customs laws have been strengthened in favour of foreign owners. However it must be acknowledged that the appropriating of foreign trade marks is a growing business in China from which local people are even now making a living. So bear in mind:
A checklist before manufacturing or selling in China
Australian companies manufacturing and selling in China need to be proactive in enhancing their trade mark protection, and a prudent company will search the availability of its trade mark and register before manufacturing or selling in China. The preliminary steps are:
Authorisations or Licences
For Australian companies having products manufactured and exported from China, it is becoming the practice of Chinese manufacturers to require signed authorisations or licenses from the trade mark owners and for these to be registered at Chinese Customs.
This authorisation prevents the products being seized at Customs as potentially infringing products. The rights granted by the authorisations or licences need to be clearly defined. For example there should be no right to sub-license without prior approval, the rights do not extend beyond the manufacture period, and that the trade marks and how they are to be used should be specified.
The "take home" message
To get the broadest possible protection, it is useful to secure registration of your trade marks as early as possible and in as many forms and variations as is commercially affordable. Of course, this means additional work and cost when applying for registration, but can provide very effective trade mark protection. To meet the challenges of Chinese law and practice, it is necessary to be armed with a strong portfolio of trade mark rights.
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