IP Protection expert Ms. Geetha from Kass International explained the first rule of IP registration in China.
What do you or what does your clients need to know about entering the Chinese market?
Rule number one is the “First to File” rule (as opposed to first to use). The first to file rule is a trademark law that means that the person who has registered the mark first in the IP office of a developing country has the rights compared to the person who uses the mark first.
Here are some Pros to the First to File Rule:
1. Easy to manage trademarks and it’s easy to identify the right owner when there is a dispute. This is because everything recorded in the IP office is the sole basis to identify the true owner when there is a dispute realating to using the same mark for identical or similar goods and services.
2. Ownership is as recorded. The records for ownership is very clear. Take, for example, the ownership of land property. The title or deed clearly identifies who the true owner of the property is. Similar to that, having a trademark registered and recorded legally is a clear identification of the true owner.
3. Searches are also absolutely clear. There wouldn’t be any misleading information or ambiguity about who the owner is. Finding out who is using the mark in the market first is actually very difficult. To find the first use of a mark, one needs to do a market surveys or get investigators involved which takes a lot of time and money. In addition to making searches easier, the Freedom to Operate opinions, as well, are very accurate.
Despite all these pros, there is one glaring con. If you’re a brand owner, you’d definitely think it’s unjust to you if you are the prior user of the mark. If the prior user was not aware of the first to file rule, but had already built a lot of goodwill and reputation by using the mark extensively in the market, there is a chance that they will lose out because of this rule.
To learn more:
1. What You Should Consider When Taking Your Product or Services Into China
2. The Selection of Your Brand and Protection of Your Brand in China
3. Some Case Studies So You Can Avoid Mistakes Made by Other Businesses in China