As a general rule, it is best to seek statutory trademark protection offensively for the goods/services in the countries where you are operating and plan to operate. That said, please also think defensively about protection in countries known for counterfeiting or other forms of intellectual property theft.

Unlike the U.S., most other countries do not require use of the mark to obtain a trademark registration. [The question of use may be at issue years after a registration is granted, when third-parties may be permitted to challenge issued registrations for non-use.] Without an actual use requirement, e.g., in China, it is possible that someone may register your mark in bad faith, preventing you from smoothly conducting business. Meaning, you want to be the first to file an application so that a registration issuing from someone else’s application cannot be used against you to block shipments of your branded products or packaging.

As trademark rights are territorial, you will not be able to rely on a U.S. registration to stop exportation of your branded products or packaging from China. But, an issued registration in China allows you to record that registration with the General Administration of Customs of the People’s Republic of China, to prevent shipments of unauthorized products, e.g., counterfeit goods, including counterfeit packaging, bearing your mark. Trademark registrations can also be leveraged in takedown procedures with sites that sell counterfeit packaging such as Alibaba, DHGate, Taobao, eBay, and OfferUp.com. While a brand owner can submit a takedown request without registering a mark, it significantly simplifies proving infringement with official registration substantiating ownership of a mark.

Whether your priority is conducting business without unnecessary interruptions or preventing counterfeiting, if you are obtaining product packaging, or components of product packaging, from China, we strongly recommend registering your mark in China for the types product packaging you obtain from Chinese manufacturers e.g., bags, boxes, tins, containers, etc. Please contact us for further information and cost estimates at iplaw@evoke.law.