Usually certain foreign enterprises inquire me their trademarks have been successfully registered in the home countries, why they still need to register the same trademark in China and what advantages of China registration are.

For advantages of registration, generally speaking, there would be several aspects as below:

1. Proactive protection
China is a first-to-file jurisdiction for trademarks. The owner of a trademark in a foreign jurisdiction has no priority in China unless and until it has filed its marks. The sole exception is for “well-known” foreign trademarks, such as Coca-Cola or McDonalds or something like that. Therefore, even though a trademark is registered outside China, it is in almost all cases not protected in China. Provided a foreign client intends to develop its markets in China, the important thing is whether its trademark is available in China. Normally, it takes approximately two years for Chinese Trademark Office to make a decision for a trademark application for registration. Two years is not a short period of time of for an enterprise. So at the very beginning of foreign enterprise coming in China market, it is very important to proactively consider the trademark protection issues.

2. Defensive proposes
As mentioned above, China is a first-to-file jurisdiction, instead of first-to-use. If a enterprise does not file its trademark in China, that means its trademark is open to other parties. Any party may apply for it and the Trademark Office will give priority to examine and grant trademark protection to the applicant that filed earliest. In case it is preemptively registered by the third party, it is both time and cost consuming thing to take back the trademark. Further, the result is not prescient.

3. To avoid potential trademark infringement
When an enterprise has actually do business in China but the trademark has not yet been registered in China, the trademark infringement risks exist. If the specific trademark has been registered by a bona fide third party which maybe do not know the foreign enterprise’s trademark when applying for trademark or by a third party in bad faith, the use of trademark of the foreign enterprise in respect of same/similar goods/service will likely infringe the trademark registrant’s trademark rights.

So it is always very important to proactively consider the trademark protection issue when an enterprise comes into China market.