As many designers expand into China, they are discovering that their names have already been registered as trademarks by individuals hoping to extort money from them. The cost of registering a trademark in China costs in the region of £2000 but many designers are paying between £100,000 and £150,000 to buy their name from squatters. If a designer cannot demonstrate that they have a sufficient global reputation in China to supersede the third-party trademark, or prove the trademark had not been used, then they either have to consider using a different name in China or pay to regain their rights to the name.
However, Philip Lim has taken a somewhat unusual route. When he discovered that his name had been already registered in China by trademark squatters, he refused to give in. Instead, he has introduced a dedicated brand mark for any ready-to-wear and footwear
Lim is far from being the only celebrity or brand to discover their name has been trademarked in China by an unrelated party. The Kardashian sisters don’t sell their clothing and perfume in China, yet their names are already trademarked by Chinese businesspeople looking to profit from enterprises that want to tap China’s booming retail market. Similarly, although Hermès had filed its French brand name in China back in 1977, it did not register the Chinese character equivalent and it has recently lost a court case against a clothing company which was found to have validly registered the Hermès Chinese brand name. We recently reported on basketball player Michael Jordan’s legal battle in China over the use of his name to sell basketball shoes and jerseys. The clothing sports Jordan’s jersey number, 23 and the name ‘Qiaodan’ which is a Mandarin translation of Jordan.
Further problems suffered by designers can arise if a Chinese firm has registered the name in a different category, resulting in designers facing the prospect of sharing its name. One Chinese business is reportedly making underwear under the label of Theo Fennell, the name of the renowned London jewellery designer.
Both the British Fashion Council (BFC) and UK Fashion & Textile Association (UKFT) have been made aware of the problem and are working with the China-Britain Business Council (CBBC), and speaking to UK MPs in an attempt to resolve the problem.
Remember, if you have plans for international expansion, registering your brand’s trademark across a range of jurisdictions is paramount! For more information on trademarks, see our seven most frequently asked queries on trademarks here!