Made in China, Not Sold in China: Do You Still Need a Chinese Trademark?

A common question from brands that manufacture in China: "We only make our products there and ship everything abroad. We never sell in China. Do we still need a Chinese trademark?" The short answer is usually yes, if your brand appears on the goods or packaging made in China. The reason is not Chinese consumers. It is that someone else can register your brand in China and use that registration against your factory and your export shipments. This guide explains the risk, how Chinese courts have treated original equipment manufacturing (OEM), and what to do. It is general information; Chinese law and the facts of each case decide the outcome.

Why production alone creates a risk

Trademark rights in China are territorial and go to the first filer. Your registrations in the US, the EU or elsewhere give you no rights in China. If a third party (sometimes a former distributor, agent or supplier, sometimes an unrelated squatter) registers your brand in China for the same goods, that party is the owner in China. Your goods, with your brand on them, are then physically produced, labelled and packed in China under someone else's registered mark.

How Chinese courts have treated OEM for export

• PRETUL (Supreme People's Court, 2015): the court held that marking goods made entirely for a foreign brand owner and exported in full, with none sold in China, did not serve to identify the source of goods to the Chinese public, and was not trademark infringement on those facts.
• HONDA (Supreme People's Court, 2019): the court said OEM processing should not be treated as automatically exempt. Marking goods in China can be trademark use, and the relevant public can include people who come into contact with the goods in transport and distribution. Whether there is infringement depends on the facts of the case.

Since HONDA, OEM export is no longer a safe assumption. A factory making goods under your brand while a third party owns that brand in China can face an infringement claim, and the outcome depends on the evidence, the similarity of the marks and goods, and the conduct of both sides.

The customs risk

China's customs IP protection covers exports as well as imports. A trademark owner who has recorded its registration with the General Administration of Customs can ask customs to detain outgoing goods that bear the same mark. If a squatter owns and has recorded your brand in China, your own export shipment can be held at the port while the dispute is sorted out. The reverse also holds: once you own the Chinese registration and record it with customs, you can stop counterfeit copies of your products from leaving China. See China customs IP recordal for foreign rights holders.

What to do

1. Search, then file in China for the classes covering the goods you manufacture there, before production starts or as early as possible. See what a clearance search covers.
2. Decide on a Chinese-character version. If you do not sell in China this is often less urgent, but squatters do file Chinese versions of foreign brands. See choosing a Chinese brand name.
3. Give the factory a written authorisation showing you own the brand and that it produces on your order. It helps the factory, and you, if a third party or customs questions the goods.
4. Record the registration with customs once it is granted.
5. Watch for new filings of your brand in China, so you can oppose during the publication period instead of fighting a registered mark later.

If someone has already registered your brand in China

Check the record before you act: who owns it, for which goods, and whether it is used. Then choose between opposition, invalidation, non-use cancellation or buying the mark. See trademark squatting in China and buying or transferring a mark. Before sending designs to a new factory, see also what to register and sign first.

Frequently asked questions

Does my Madrid registration cover China? Only if China was designated and protection there was granted. Check the status of the Chinese designation in WIPO's Madrid Monitor.

Our products carry only the factory's brand, or no brand. Do we still need to file? The production risk described here comes from your brand being on goods made in China. Your own brand can still be squatted in China for other reasons, so a filing is worth considering if you plan to use it there later.

Will a Chinese registration stop counterfeits sold outside China? Not directly. Outside China you rely on your registrations there. The Chinese registration and customs recordal help stop counterfeits at the point of export.

J&C Intellectual Property Agency, founded in 2008, is a CNIPA-recorded trademark agency and a member of the China Trademark Association. We handle trademark searches, filings and customs recordals in China for foreign brands; see our trademark registration service.