The most common issue with businesses trying to do business in China is failing to protect their brand through either a trademark or a domain name.
TM rules are different in China
Their rules for trademarks and domain names are similar in the sense that both have important differences to Western trademark and domain name policy.
For trademarks, China use the first-to-file rule as opposed to Australia’s first-to-use. The first-to-file rule determines that the person who filed their trademark application first is granted the right to that trademark and can stop others from using it.
Australia’s first-to-use rule gives priority to parties who, as its sounds, are the “first to use” a particular trademark “as a trade mark” and can demonstrate evidence of that use. Other countries which are also known as “first to use” countries include the United States and New Zealand.
A renowned case study was Apple’s failure to register their IP trademark in time. In 2012, they were forced to pay $60 million dollars to secure it.
Domain Name Dispute Time Limitations
Domain name rules in China also differ. Under UDRP rules that govern common spaces like the .com, .net etc there are no time restrictions that a complaint can be brought to a panel for a decision.
under the revised CNNIC ccTLD Dispute Resolution Policy (CNDRP), the Dispute Resolution Service Providers do not accept the Complaint regarding domain names with registration term of over Three years. The means the brands need to ensure that they are monitoring for parties who have registered their IP. If a complaint isn’t submitted within the time limitation, the TM owner loses the right to attempt to recover the domain name.
Specific TLD timeframe comparison is as follows:
Register your IP in China, quickly
The first step to protecting your IPR in China is to register your trademarks and corresponding domain names in the applicable domain namespace (we recommend at least .cn, .com.cn and the Chinese IDN).
Monitor for domain name infringements
Whether you are or are not actively trading in China, monitoring for 3rd party domain name registrations is important to avoid losing the domain name due to the time limit rule. A good monitor should be able to identify an unauthorized registration of your brand in different languages and also misspellings. The Identical and confusingly similar rule applies in CNDRP and HKIAC proceedings.
The basics for registering a Chinese domain name is here.
Find out about domain name monitoring options here.
Brandsec is a corporate domain name management and brand protection company that look after many of Australia, New Zealand and Asia’s top publicly listed brands. We provide monitoring and enforcement services, DNS, SSL Management, domain name brokerage and dispute management and brand security consultation services.