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Andy Warhol’s pop art portrait of Chairman Mao is a striking example of East meeting West in culture. In business, a similar East-West encounter happens when Western brands enter the vast Chinese market – a meeting of different languages, consumer bases, and importantly, different legal systems for trademarks. For SMEs with global ambitions, understanding how trademark protection works in China (alongside the UK, EU, and US systems you may already know) is crucial. A brand that’s secure at home could face unexpected challenges abroad. This discussion explores the geographic dimension of trademarks – from China’s first-to-file regime to international registration strategies – so your brand doesn’t get lost in translation or lost to opportunists overseas.
One of the biggest differences between Western trademark systems and China’s system is the concept of first-to-file. While registration is strongly advised in the United Kingdom and the European Union, prior use of a brand may provide you with limited rights. Even in the United States, rights are based on first use; you can establish common law rights by selling under a regional name. China, on the other hand, generally grants trademark rights to the first person to file an application, regardless of who first used the mark. This has resulted in a phenomenon known as trademark squatting, in which individuals in China preemptively register foreign brand names (particularly well-known ones or those they believe will enter the market) in order to either block the true owner or sell the rights for a profit. SMEs that are expanding abroad must deal with this risk. The lesson is simple: if China (or any other country with a similar approach) is on your radar, file for trademarks there first, even before you publicise your expansion. Owning the trademark in that jurisdiction can save you from costly legal battles and the need to rebrand for that market.
Geography encompasses not only legal borders, but also languages and cultures. In the West, trademarks are frequently written in Roman characters. However, Chinese characters are the most commonly used by consumers in China. Successful foreign brands frequently adopt a Chinese name that is not only phonetically similar to the original, but also has a positive connotation. Coca-Cola famously chose the name 可口可乐 (pronounced “Kekou Kele”), which roughly means “tasty and joyful”. If you simply market under your English name, Chinese customers or distributors may create an unofficial Chinese nickname for your brand, and someone may rush to trademark that name before you do. As a result, a comprehensive China strategy includes deciding on a good Chinese name for your business or product and registering it as a trademark. Consider logos: if your logo contains English words, you may need to create a version with Chinese text or ensure the design is protected regardless of alphabet. The EU and UK primarily use Latin scripts, but consider transliterations if applicable. Adapting your brand identity to local norms while legally protecting it ensures that you truly own how your brand is perceived in each market.
Navigating trademark laws in multiple countries may appear daunting, but there are tools available to help. The Madrid Protocol, an international treaty that allows businesses to seek trademark protection in over 100 countries using a single, streamlined application, is one key mechanism. If you are a SME in the United Kingdom, the European Union, or the United States, you can use your home application or registration to file internationally through the World Intellectual Property Organisation (WIPO). China also participates in this system. In practice, this means you don’t have to hire a Chinese lawyer or translate all of your documents from the start; instead, you file through Madrid, designating China (and any other target countries), and the respective national offices review your application. However, using Madrid does not change the substantive law: your mark must still be registrable and not infringe on someone else’s prior rights in each jurisdiction. And if an issue arises in a specific country (for example, China issues an office action refusing the mark for some reason), you will most likely require local counsel to address it. Madrid is a low-cost starting point for broad coverage, but strategic thinking is required: identify which markets are priorities (where are your customers, manufacturing bases, or next growth opportunities?) and cover them first. Consider differences such as classification systems; the Nice Classification is used by the majority of the world, but practice may vary. China, for example, has a sub-classification system, so you may need to list products very specifically. A well-thought-out international trademark filing strategy serves as a road map for your brand’s global journey, preventing it from becoming lost or encountering dead ends in foreign jurisdictions.
Owning a trademark in a country is one thing; enforcing it is another, particularly in countries with different legal systems. Over the last decade, China has significantly improved its intellectual property enforcement mechanisms in response to foreign business concerns. Specialised intellectual property courts are now available in major cities. If you own a Chinese trademark and discover counterfeits or unauthorised use (for example, a local company using your brand on knock-off goods), you can file administrative complaints (typically through the local Intellectual Property Office) or court litigation. Chinese authorities conduct raids and seizures against counterfeiters, especially if you register your trademark with customs to prevent fake exports. However, pursuing legal action abroad can be costly. Many SMEs prefer to send warning letters through local counsel or to negotiate a settlement. In some cases, if a bad-faith squatter has your mark and you only find out later, Chinese law allows you to cancel trademarks that were filed in bad faith with no intention of using them. Recent amendments to China’s trademark law have aimed to combat trademark hoarding. Similar principles apply to other markets: having a local partner or attorney can help you navigate court procedures or enforcement agencies. Also, keep cultural differences in mind; in some places, amicable negotiation or mediation is more common as a first step than proceeding directly to litigation. The main message is that while trademark registration is your ticket to the enforcement game, you still need a playbook for each region to effectively stop infringements and protect your brand’s reputation.
Given that our theme is about geography, it’s worth noting a related concept: geographical indications. These are not trademarks in the traditional sense, but rather names associated with places and products. The EU is very protective of GIs; if you are a food or drink SME, you may be eligible for GI status if your product is traditional and region-specific. Outside of GI systems, trademarks can sometimes clash with geographic terms. For example, you couldn’t trademark “Yunnan Tea Company” as a brand if it only indicated that the tea is from Yunnan; that would most likely be considered descriptive. On the flip side, if your brand is coincidentally a place name but you’re not using it in a geographic sense (e.g., “Elephant & Castle” for a pub brand expanding to the US), you can trademark it, though you may have to disclaim the geographic part in some filings. When expanding to markets like China, also check that your mark doesn’t inadvertently mean something undesirable in the local language or conflict with local place names or symbols. Weaving through these nuances ensures your brand is respectful of local norms and legally sound.
In an interconnected world, even a small business can quickly attract customers – and imitators – from across the globe. Your brand might start in Margate or Manchester but find fans in Shanghai or San Francisco. Embracing that opportunity means proactively extending your trademark strategy beyond home turf. By understanding key differences – like China’s first-to-file rule, the importance of local language marks, and the tools for international registration – you equip your business to enter new markets with confidence. It’s about planting your flag early and firmly: securing rights to your name and logo wherever you do (or plan to do) business. While laws and enforcement practices vary by country, the fundamental principle is the same: a trademark is your business’s identity card in the marketplace. Make sure you carry it wherever you go. And if the terrain seems complex, remember that with expert guidance, even an SME can navigate the global trademark landscape and turn it into a competitive advantage.
If you need any further guidance or support, please contact tmr@trademarkroom.com
