Louise Nash, Partner in the Branded Goods Practice at law firm Covington & Burling.
It’s no secret that China is a growth market for fashion, but it is also a complex legal landscape for brands to navigate.
Burberry is confronting the challenge of protecting its signature tartan as it mounts an appeal to a November decision by Chinese authorities to cancel the trademark for its iconic check.
This decision, which relates solely to leather goods, arises from Chinese brand Polo Santa Roberta’s application to have Burberry’s Haymarket Check removed from China’s register of trademarks. Because the case underscores brands’ need to guard their trademarks vigilantly abroad, those looking to build a brand in China should consider these five pointers.
First, make sure your trademarks are on the books. China is a first-to-register country, meaning trademark applications filed in China first will be granted protection. Those filed later will not.
Second, internalise the phrase ‘use it or lose it’. Under Chinese trademark law, a trademark can be cancelled if the period of non-use is at least three consecutive years.
This provision supplied the legal basis for cancelling Burberry’s mark.
Next, get famous. In many countries, trademarks qualifying as so-called ‘famous’ or ‘well-known’ marks are entitled to additional protections. Chinese law provides extra protections to well-known marks, even if not in use. Being well-known could help Burberry.
Fourth, assume trademark protection is territorial. Qualifying as well-known in China will not necessarily translate to a mark being well-known abroad.
Finally, in law as in fashion, stay current. An upcoming change regarding well-known marks may affect competition dynamics in China, possibly to benefit foreign brands. Under a recently enacted amendment to China’s Trademark Law, which will come into effect in May 2014, companies could be disciplined for using the term ‘well-known mark’ on products or their containers or packaging, or in advertisements, exhibitions or other commercial activities.