Trade Marks

If your Nigerian brand manufactures products in China or plans to sell there, protecting your intellectual property in China is essential. Even if your trade marks are registered in Nigeria, the UK, or Europe, they do not automatically provide protection in China.

China operates under a “first-to-file” trade mark system, meaning the first person to register a trade mark generally gains the rights. Unfortunately, opportunists often exploit this system by registering successful foreign brands in China before the true owners do. This can result in high costs to buy back your own brand or prolonged legal disputes to reclaim it.

Why Nigerian Brands Need Protection in China

Unlike Nigeria, where unregistered rights may offer some protection for your brand, China only recognises rights granted through registration. This makes early action crucial:

• File your trade mark before manufacturing: Even if your products are only being made in China, securing your mark in advance prevents others from registering it in bad faith.
• Register Chinese-character equivalents: Most Chinese consumers cannot read English or Latin alphabets, so registering a translation of your brand name can be vital. For example, Coca-Cola is registered as “Kekou Kele” (meaning “Delicious Happiness”), which resonates culturally and phonetically.

Understanding the Risks

Several challenges are unique to the Chinese trade mark system:

1. First-to-file advantage: Opportunistic registrants may register your brand before you. Recovering it can be costly and time-consuming.
2. Bad faith claims are limited: Chinese law now prevents distributors or agents with prior business ties from registering your mark in bad faith. However, proving “bad faith” generally requires evidence that your brand already has a reputation in China, which is difficult for new entrants.
3. Sub-classification system: China divides goods and services into detailed sub-classes. Using the same classification as your Nigerian or UK trade mark may not be sufficient. Marks in different sub-classes may not be considered similar, while items in the same sub-class are automatically treated as similar—even if they wouldn’t be in practice.

Practical Steps for Nigerian Brands

1. File early: Secure your trade mark in China before launching products or starting manufacturing.
2. Consider translations: Protect your brand in Chinese characters, choosing a translation that reflects meaning, sound, or a culturally relevant concept.
3. Review your goods and services: Map your products to the appropriate Chinese sub-classes to ensure comprehensive protection.
4. Monitor for infringement: Keep an eye on local trade mark filings to prevent hijackers from registering similar marks.
5. Develop a cost-effective strategy: Work with legal experts to prioritise registrations and avoid unnecessary expenses.

Conclusion

China is a critical market for Nigerian brands involved in manufacturing or retail. Without proper trade mark protection, your brand is vulnerable to opportunistic registrants and costly disputes. Early registration, strategic translation, and careful planning are key to securing and enforcing your brand rights in China.

At Cardinal Counsel, we help Nigerian brands navigate the Chinese trade mark system, from filing applications to developing international IP strategies.

Contact us today at info@cardinalcounsel.co to discuss protecting your brand in China and beyond.