China’s spectacular economic growth over a couple of decades did not escape the attention of thousands of companies looking to expand. Some moved production to what was then a cheaper part of the world. Others launched export projects beyond the Great Wall. Then there are companies with the broadest vision of Asia, who saw China as a bridgehead for further Asian expansion.
Whatever the scenario, the success of a stable, long-term business depends largely on whether a company is well prepared to do business in China. Trademark registration is one of the first tasks before doing business with the Chinese. Often the question is whether:
whether registering a trademark in China automatically protects it in Macao and Hong Kong?
When it comes to trademark protection, Mainland China, Macau and Hong Kong are separate jurisdictions. This means that each of these jurisdictions has adopted its own legal system and IP regulations, although they are similar in concept. In China, the National Intellectual Property Administration (CNIPA) is responsible for the protection of intellectual property.
In the case of the much smaller territories of Macau and Hong Kong, IP protection is the responsibility of special departments within the respective Ministries of Economic Development. These are respectively Directorate for Economic and Technological Development (DSEDT) and Hong Kong Intellectual Property Department (HKIPD).
China has adopted the ‘one country, two systems’ model for Macau and Hong Kong. It is based on the existence of different legal systems within a single government entity. As a result, IP rights obtained in mainland China are not valid in these territories. To obtain trademark protection in these two special regions, separate applications must be filed. Nevertheless, in the event of litigation, protection of the trademark right in mainland China may prove to be an important part of a fighting strategy, e.g. to regain rights to the trademark in the territory of one of the two Special Administrative Regions concerned. However, this alone does not constitute registration and exclusive rights to use the mark in any of these regions.
Companies launching cross-border online trading should consider another aspect that is often overlooked in brand protection planning. This is the cross-border e-commerce formula in China (yes, make no mistake, this is mainland China). This formula allows companies based abroad to sell retail products directly to the Chinese consumer (more on this trading model can be found here). A Chinese courier company handles the delivery. It picks up the product from a warehouse in the border zone and delivers it to the consumer, usually within one day. Most interestingly, Hong Kong is treated as a “foreign country” in this model, so e-commerce companies register their headquarters there.
How does this relate to trademarks? Well, since all cross-border e-commerce is formally sold to the Chinese in and from Hong Kong, the trademarks should also be registered in that territory.
Due to the separate regulations between Mainland China and Macau or Hong Kong, there are some differences in trademark registration. One is the method of applying for protection itself, which is handled by separate offices with jurisdiction in each area. The other is the details of the term of protection. While a trademark is protected for 10 years in China or Hong Kong, it is only protected for seven years in Macau.
There are other differences, but regardless, at Trademark Partners we know how to register trademarks in each of these territories.
