What to do to prevent my OEM or ODM partner from pirating my trademark in China?

Contact Mr. Ma Jun's email majun@100ybf.com, Mr. Ma Jun is a professional trademark consultant, he is founder of 100IPservice, who files more than 6000 trademarks per year with high success rate.

Editor's Note: Make sure you understand the ownership rules of trademarks in China. Otherwise you will find your rights “pirated” in a legal way.

“I have a wonderful product with wonderful name, but I do not have a trademark in China, I asked my Chinese partner to produce the product. Who owns the trademark?” Your gut feeling may lead you to the conclusion the trademark is yours, but I would say that depends.

China applies a first-to-file system, which means who files the trademark will be viewed as the owner of the trademark. China does have certain degree of protection to the actually owner of the trademark – mostly in case said owner successfully proves a. the trademarks is from him, b. the applicant applied the trademark and knows such trademark is from him, c. the trademark is applied on the same class the owner works in. I would say, in most of the cases, if the OEM partner applies the trademark in his own name, it might be possible to prove the conditions, but what if the OEM partner found others the actual owner does not even know? And in case of ODM, the brand may be made invented by the ODM partner.

One of my clients from Australia has set up a recommended example for protection of trademark in this case:

a. Apply trademark as early as possible;

b. Put all the ownership clauses in a contract to set everything clear, whether in an ODM contract or NNN agreement.

Contact Mr. Ma Jun's email majun@100ybf.com