Companies that sell products with famous names and long histories - the so-called time-honored brands - are being warned to hurry up and register those brand names and trademarks in foreign markets, before rivals effectively steal them.

And the push to educate companies about the risks and help them avoid the pitfalls is being led by the local government, which is offering training on how to register intellectual property overseas, according to Yan Xiaoyan, an official from the Beijing Municipal Committee of Commerce.

The committee held a seminar on the subject on Sept 13 where companies were advised on registering brands and trademarks overseas.

Beijing business owners were told about the Madrid System for the International Registration of Marks.

According to the World Intellectual Property Organization (WIPO), the Madrid System offers trademark owners the chance to have their trademark protected in 85 countries by filing a single application at their national or regional trademark office.

According to the Beijing Traditional Brands Association, only 25 of its 170 members in Beijing have so far registered their names and trademarks in more than 50 countries. Some foreign companies have taken advantage of the tardiness and have swooped to register time-honored brands, meaning the Chinese company that owns the brand in China will find itself unable to sell its product under its well-known name in foreign markets.

"There are so many painful cases of time-honored brands being pre-emptively registered by foreign companies overseas and some enterprises have been unable to get their brand names back," said Wang Binying, deputy director-general of WIPO.

Statistics from the State Administration for Industry and Commerce in 2005 show that about 15 percent of Chinese famous brands have been pre-emptively registered in this way.

One example is Tongrentang, a well-known brand of medicine in China. The name and trademark were registered in Japan by a Japanese company without the Chinese company's knowledge in 1989 and, despite legal wrangling, it is likely the Chinese company will not be able to get the name back.

Such preemptive registrations by competitors looking to grab market share or by firms simply looking for a financial windfall by selling the name back, could prevent some Chinese brands from successfully entering overseas markets.

Wang said many time-honored brands in the capital simply do not understand how to protect their rights in overseas markets and added that domestic enterprises have "four don'ts" when it comes to copyright issues overseas.

"They don't know their brands are pre-emptively registered. They don't think it is necessary to file a lawsuit. They don't know how to file a lawsuit. And they don't think they will win one if they do," he said.

Yan said the best form of attack is defense and he urged companies that own famous brands to protect their property by registering them in overseas markets before it is too late.

China Daily

(China Daily 09/16/2010 page25)