Tasmanian Business Reporter March 2018

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Tasmanian Business Reporter - MARCH 2018 7
FOCUS ON BUSINESS
Beware of Chinese IP squatters
Sally
Chandler
Tradestart Adviser
OVER a casual dinner
with friends recently, I
learnt of a horrible experience
in China.
A company from
Queensland manufactures
a range of cosmetics
using an ingredient
sourced through their
long-term contact with
aboriginal people in the
Kimberley.
Wishing to grow their
business internationally,
they exhibited at
a trade show in Hong
Kong.
They had not registered
their trade mark
for China and China has
a “first-to-file” rule.
That means a business
has no rights to
their own trade mark
unless they register it in
China first, before anyone
else registers it.
AN article published by
HR Daily* states that
the Fair Work Commission
has been taking a
“very hard line” against
employers seeking legal
representation, putting
the onus on HR professionals
to argue their cases.
Historically, in 90 per
cent of cases brought
by employees, employers
received leave to be
represented by lawyers
or paid agents, but for
the past 18 months it
has been going the other
way, HWL Ebsworth
partner Brad Swebeck
told HR Daily.
So what does this
mean for employers on a
practical level?
Unlike the Supreme or
Magistrates Courts, the
Fair Work Commission
is designed for parties
to represent themselves
during proceedings.
So if you do wish to
have a lawyer or paid
agent represent you, then
the FWC will need to
be satisfied before they
grant permission for
them to appear.
This means that you
could have been instructing
a lawyer for some
time (and cost) only for
it to come to the day of
the conference or hearing
and the FWC refuses permission
for them to assist
you.
Section 596 of the Fair
Work Act 2009(2) sets
out the circumstances
in which the FWC may
The company followed-up
on the enquiries
they received at the
trade show after returning
home from Hong
Kong.
They identified a suitable
business they wanted
to appoint as a distributor
for certain regions of
China but when the time
came for product registration
in China prior to
market entry, their China
partner advised them their
trade mark had already
been registered by someone
else.
Unbeknown to the
company, some-one visiting
or passing by their
stand from China or even
cruising their exhibitor
profile on the trade show’s
website, had noticed the
unique ingredient in the
cosmetics and registered
Abbey
George
Workplace Relations
their trade mark in China.
The company retained
a lawyer and contact was
made with the person who
registered their trade mark
– a trade mark squatter –
who asked for $25,000 to
release the trade mark.
All that effort and all the
Spotlight on Fair
Work representation
grant permission for a
party to be represented
by a lawyer or paid agent
which includes:
• complexity – would
it allow the matter to be
dealt with more efficiently?
• Fairness – can the
party represent themselves
effectively and
would it be unfair for
them not to be represented?
• Is one (or both) parties
from a non-English
speaking background or
has difficulty reading or
writing?
• If the party seeking
representation is the employer
– do they have
a specialist human resources
staff?
Having said this, there
are circumstances set out
in the legislation where
a party does not have to
ask permission for representation
by a lawyer or
paid agent.
Section 596 of the Fair
Work Act 2009(4) states
that this includes:
• when the lawyer or
paid agent is an employee
or officer of the person;
or
• where they are an
employee or officer of an
Beware of trademark squatters when you are showcasing
your wares in China.
organisation; or of
• an association of employers
or a peak council
or a bargaining representative.
In simple terms, this
means that unions are
generally exempt from
seeking permission, but
so are the Tasmanian
Chamber of Commerce
and Industry as we are a
peak employer not-forprofit
organisation.
If you are a member,
or seek TCCI representation
in matters in the
FWC you can rest assured
that we do not
have to seek permission
to represent you.
If you do have any
questions or need
advice in relation to
the above and with
all of you employment
related matters.
You can contact
the Helpline on
1300 765 123 or the
TCCI on 1300 59 122
or workplacerelations@tcci.com.au
*https://www.hrdaily.com.au/
nl06_news_selected.php?ac
t=2&nav=13&selkey=4940&u
tm_source=daily+email&utm_
medium=email&utm_campaign=Daily+Email+Article+Link
money they had already
spent to try and enter the
market and if they wanted
to go ahead and enter the
China market with their
own trade mark they felt
they had no option other
than to pay the money.
The only other option
was to change their name
and re-brand.
It is so important, if a
business is contemplating
the China market at
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any stage, that because of
the first-to-file rule, they
apply for a Chinese trade
mark registration as early
as possible.
Businesses can search
the Chinese trade marks
register to see if their identical
or a similar trade
mark has already been
registered by going to the
Chinese Trademark Office
website.
The office provides a
Consulting a
trade marks
attorney is
always a
very wise
choice when
considering
China
free online search tool at
http://wsjs.saic.gov.cn/ -
click the “English” link
at the upper right of the
page.
Be patient, as the website
can sometimes be
slow to respond or you
may need to try again later.
Click on the SISTM
search tool and choose the
“Selective Search” rather
than “Automatic Search”.
If no conflicting marks
are found, that is good, but
there is a delay of three to
six months between an
application being filed
and appearing in the database.
Additionally, the search
is not conclusive and it
is easy to miss relevant
marks, but it is a good
start.
If a conflicting registration
is found a business
has several options – if
they believe the mark has
not been used for three
years since registration,
they can file an action to
have the mark cancelled
for non-use.
If it is within the threemonth
opposition period
following acceptance, a
business can oppose the
application.
In both cases though,
it is very hard to succeed
in establishing grounds of
bad faith.
Consulting a trade
marks attorney is always
a very wise choice when
considering the China
market and indeed, any international
market.
The up-front cost gives
peace of mind and can
save a bundle of money...
For international
trade and
investment assistance
contact the
TCCI’s
TradeStart Adviser,
Sally Chandler, at
sally.chandler@tcci.
com.au or phone
1300 559 122.