The New York Times has a story today on Donald Trump’s trademark filings in Greater China, Trump Company Moves to Protect Brand in Chinese Gambling Hub. And here is something I never thought I would say: there is a lot to be learned from how Donald Trump (or at least one of his companies) is handling China trademarks.
According to the NYT article, “the company that manages the Donald J. Trump brand has moved to protect the name in Macau” by filing for trademark protection there. There are at least five things to be learned from Trump’s Macau trademark filings.
The first lesson to be learned from is that protecting your brand name via trademark registrations in the PRC does not protect your brand name in Macau. To protect your brand name in Macau, you must register your brand name as a Macau trademark. This also holds true for Hong Kong and Taiwan. As I wrote in China And Hong Kong Trademarks. Think Puerto Rico, Mainland China, Hong Kong, Macau, and Taiwan all have separate and independent trademark systems:
Hong Kong and China are the same way [as Puerto Rico and the United States]. And Taiwan and Macau too. I am constantly having to explain this to our clients, at least half of whom just assume that a trademark registration in the PRC operates as a trademark registration in Hong Kong and vice-versa. And who can blame them, since Hong Kong is one with the mainland, right? Same with Macau, right? Many have this same view regarding China and Taiwan as well. None of this is true.
If you want your brand or mark registered and thus protected in China, Hong Kong, Macau and Taiwan, you must register them in China, Hong Kong, Macau and Taiwan. If you thought you were protected in more than one of these places simply because you had registered in one, you had better get moving and start registering in one, two, or three more.
The New York Times article goes on to note that Trump’s filing for trademark protection for Trump hotel and casino brand names in Macau does “not necessarily indicate that President Trump or the Trump Organization will eventually open a Trump hotel or casino there.” This gives rise to the second lesson, which is that it often makes sense to register your brand name as a trademark in China (and elsewhere) even if you are not doing any business there, at least just yet. China is a first to file country, which means that whoever registers “your” brand name in China first gets it. So if you are thinking you will be selling your product or your services in China three years from now, it probably makes sense for you to register your brand and your logo as trademarks in China now.
The third lesson to be learned is the need to make sure your trademark registrations are both current and include sufficient classes to truly protect you. Our China trademark lawyers are constantly getting contacted by foreign companies seeking IP protection based on their trademark filings, only for us to have to tell them that gaps in their trademark registrations are big enough for rival companies to drive a truck through or even that their registrations have expired or never existed. The article notes how Trump’s company already owns more than a dozen trademarks in Macau (for casinos, constructions, hotels and real estate) and it is not clear whether it is adding to that total or just re-upping existing trademarks. Just last week I got a call from a U.S. company that four years ago paid a company in China to register three of its trademarks there and just learned that despite having received “official confirmation of the approvals,” no such filing was ever made. Needless to say the Chinese company (a fake law firm) that did this no longer shows up on the web nor probably ever really even existed. See The Fake China Law Firm Scam. I have no doubt Trump is using a real law firm for his filings.
The fourth lesson to be learned is that once you secure your trademark registration you monitor it to make sure nobody is treading on it and if they are, you do something about it. The article notes how Trump last year “won a legal battle with a Macau company that had registered to use the name ‘Trump’ in coffee shops and restaurants.”
The fifth lesson is that you should consider securing a trademark that protects your brand in both the English language and the local language. The article notes that Trump’s registrations “include ‘Trump,’ ‘Donald J. Trump,’ ‘Trump Tower,’ ‘Trump International Hotel and Tower’ and ‘Chun Pou’ — a Cantonese version of Mr. Trump’s name.”
Chun Pou? Who knew?