Importance of pre-filing trade mark search

A Croatian charcuterie exporter decided to revise its China market strategy since the SME’s business in China was not doing so well. Some years ago, the company had been working with a Chinese distributor, however, due to low sales volume, lukewarm consumer interest and constant disagreements with them, the SME had decided to stop doing business with that particular distributor. Despite the unsuccessful business deal with the distributor, the SME believed that they could still make a profit in the China market if they improved their market strategy. To this end, the SME participated in an export promotion programme organised by the local chamber of commerce. Amongst other things, the export promotion programme focused on brand building and brand protection through IP. The SME had not yet registered any IP in China as they had initially wanted to test the market before investing in IP protection, however, the programme made the company understand the importance of IP protection if they wanted to succeed in the China market. As a first step, the SME decided to register its trade mark in China. Since the company had recently obtained an EU trade mark, extending it to China via the Madrid System seemed the easiest approach. The SME representative went to the Croatian IP Office to file the Madrid System trade mark extension requests to China. The company had registered the logo and the company name separately, and both would be extended to China. At the IP Office, the SME was advised about the importance of distinctiveness and confusion of trade marks, however, since the company name was also a traditional Croatian family name, the SME was confident enough that there would not be a similar brand name in China.