Any business with international aspirations will have China in its sights. Consumption of imported wines and spirits is increasing rapidly, particularly in relation to high end products, which are seen as reflecting power and sophistication upon their consumers, or those giving such items as present. The current opportunities for Western brands seem limitless.

However, even if you have dealt with all the bureaucracy and red tape and sorted out your importation and distribution channels with reliable local partners there can still be unforeseen problems. We have recently seen several cases where clients have found that completely unconnected Chinese third parties have registered clients' trade marks in China, leading to the bizarre situation where any use by clients of their own trade marks in China could infringe those third party rights.

There is no doubt that China is slowly improving its protection for international brands. However in these sorts of cases it is extremely difficult for the genuine brand owner to reclaim its mark, other than through buying it off the owner of the registered mark. In theory there are procedures for dealing with these situations through the Trade Mark authorities, but in practise the rightful owner will need to show that it had a significant reputation in China, or had used the mark itself widely in China, at the time the unauthorised application was filed. Without such evidence the chances of successfully challenging the unauthorised registrations are low, leaving the brand owner potentially locked out of the market and with no obvious recourse.

What can be done?

It is vital that any business considering entry to the Chinese market applies to register its own marks at an early stage, and preferably before it talks to any potential importers or distributors. Information can easily escape, and even if your proposed importer or distributor is entirely trustworthy, news of likely brand launches may end up with opportunists who may see a chance to make themselves money by disrupting your plans.

In addition, there are certain Chinese businesses that are serial offenders, suggesting that they keep an eye on trade marks being registered in the EU (or elsewhere) and then try to anticipate which owners are likely to enter the Chinese market and might be prepared to pay to recover their trade marks at that time.

It is also worth looking at possible Chinese character names for your bands. Although you may not use the Chinese name yourself, it is likely that your customers will not always refer to your brand by its English name, and a Chinese equivalent will emerge whether you like it or not. These versions may not always convey the brand image that you require, so again it is preferable to control the situation yourselves by working with a Chinese brand consultant to develop an appropriate local name, which should also be registered as a trade mark at the earliest opportunity.

Trade mark registration in China is relatively inexpensive and certainly far less costly and time consuming than fighting to recover your mark that has been registered by a local business or individual. It will also serve as a block to any later similar applications filed by third parties - if the marks they apply for are the same as or similar to marks already registered it is likely that they will be refused out of hand by the Chinese authorities, without the brand owner even knowing what is going on.

You will have a period of three years from the registration of your mark within which to start using your mark in China (and potentially longer if nobody challenges your registration), which should give you plenty of time to make any arrangements for distribution of your brands, and by registering your trade marks beforehand you will have headed off one of the major problems and put yourselves in the strongest possible position to stop anybody else from using your marks or any similar marks.

* Nick Baker is a partner with Sipara, a firm specialising in the international protection of brands, domain names and related rights. He can be contacted at This e-mail address is being protected from spambots. You need JavaScript enabled to view it .