12 top tips

TO PROTECT YOUR IP AND SUCCEED IN CHINA

1

Do your due diligence! Kiwis wanting to do business in China need to first check whether their brand is already in use there. Having your brand registered in New Zealand doesn’t necessarily mean you own it elsewhere. China has a ‘ first to file’ trademark system which means businesses have no rights to their trade mark in China until they actually register it there. Until then, businesses risk someone else registering it and suing them for infringement, regardless of whether you’ve been using your brand for years or not.

2

Is China a viable market for your goods/ services or is a China partner the best way to meet demands for goods/ services in other countries? If China is a viable option, what are the best channels to use?

3

Seek advice from a specialist IP lawyer to secure the right IP protections in China for your brand, products or ideas at the earliest opportunity.

4

Register your trademark(s) in China early – even if you don’t intend to enter the Chinese market in the near future. If someone registers your trademark before you, then it’s likely you won’t be able to make or sell your branded product in China without a costly battle or change of brand.

5

Own your IP in China and manage your IP portfolio with a specialised IP lawyer. Don’t entrust your distributor/ supplier or an agent based in China with obtaining protection for your IP. This may seem helpful and an inviting prospect but there are too many instances, for example, where the agent ends up owning the trade mark. This makes it difficult, if not impossible, for companies to change agents or manufacturers without abandoning their brand.

6

If your business relies on trade secrets and is looking to manufacture and/ or sell in China, don’t give away all the steps involved in making your product to a single supply chain partner. Don’t ever assume the ‘secret sauce’ to your product will be kept confidential by your manufacturer. IP theft is a worldwide problem and can happen to you.

7

Don’t rely on IP protection in New Zealand to safeguard you when entering the Chinese market. IP rights in New Zealand or other countries carry no weight in China and it certainly means nothing to China Customs. The only way to ensure China Customs seize infringing goods actively is to obtain registration for your IP in China, and then record your IP rights with China Customs.

8

Cost should not be a barrier to getting Chinese IP protection. The costs are relatively low compared to the cost of trying to win back your IP.

9

Make sure your brand fits the Chinese market and consider creating a Chinese- specific brand. What works in New Zealand doesn’t necessarily resonate in China. Many companies find they need to adapt their brand or change it completely to appeal to the Chinese market.

10

Be ready to adapt, scale and move fast. Chinese businesses operate at a faster pace than New Zealand and expect you to do the same.

11

Ensure your team of advisors has a strong track record in the Chinese export market and in managing language and cultural differences.

12

Make sure expectations of you and your business partners are clear, that these are properly documented and written contracts are in place. Again, do it early – it is difficult to impose new conditions on a partner down the track.