Strategic Advantages of Registering Trademark in China

Often foreign companies pay less attention to registering their trademark in China. It is important to remember that China does not provide protection for unregistered trademark under the common law. The value of China trademark registration is immense and the foreign firms having business interest over here simply cannot overlook the need for registering trademark in China.

Protecting a company’s trademark is a strategic move in the long term and should be carefully considered. The trademark search is based on the public trademark database of CTMO, any search activities that processed in China are all based on that database. This database is comprised of all active and many inactive marks that were either applied-for or registered pursuant to the current Trademarks Act or former trade-mark legislation of China. The database includes additional words and designs which are not by definition trademarks, but that is protected by the Trademarks Act or other related legislation.

Protect Trademark Infringement with the Chinese Character Trademark

Unlike the US, China follows the ‘first to file’ system rather than the ‘first to use’. US companies work under the impression that by simply registering their trademark in the United States will be automatically recognized in China as well. Your takedown request will not be granted if you only registered it in the US or other foreign jurisdiction. You need to have a Chinese character trademark of your company while doing business in China.

Registered trademark helps to enter into a licensing agreement

Trademark has a value not only to the owner due to its distinctiveness but also to customers who associate this trademark to a specific product or service. Moreover, if a foreign company wants to enter into a licensing agreement with a Chinese distributor, the foreign firm has to register trademark in China first. Most of the renowned Chinese distributors will only form business relationship with the overseas enterprises whose trademark is registered in China.

Trademark registration drives business value

Trademarks provide value beyond your core business. Trademarks can appreciate in value over time. The more your business reputation grows, the more valuable your brand will be. A trademarked name marks all of your products and services as yours and no one else’s and can also protect you from counterfeit products. Trademarks in China are valid for 10 years from the date of registration. Requests to renew must be filed within 6 months prior dates of expiration.

In China, the protection of the exclusive right to use a trademark is based on registration. Registration can be obtained either by filing an application directly at the CTMO (Domestic application), or by filing an application at the World Intellectual Property Organisation (WIPO) on the basis of a trademark registered or applied in another country than China.

Share with friends:

Facts you Must Know Before Conducting China trademark Search

Registering your trademark in China is a long and time-consuming process. According to the China Trademark Office, it takes typically nine months for processing your trademark, but the reality is it takes more than a year and in some cases even longer. China trademark registration undergoes formal examination and substantive examination on absolute and relative grounds within nine months from the date of receiving the application documents for trademark registration.

China’s First-to-File Trademark Registration Process

China is a “first-to-file” country which means that the person who registers a trademark for a product, will also have all exclusive rights to distribute and sell the product. You won’t, unless you register the trademark first. The fact is that it’s practically impossible to engage in the Chinese market long term, without registering your trademark.

The Trademark Database-

The trademark search is based on the public trademark database of CTMO, any search activities that processed in China are all based on that database. This database is comprised of all active and many inactive marks that were either applied-for or registered pursuant to the current Trademarks Act or former trade-mark legislation of China. The database includes additional words and designs which are not by definition trademarks, but that are protected by the Trademarks Act or other related legislation.

Conducting China Trademark Search

While conducting China trademark search, do keep in mind that three-dimensional symbols or combinations of colors also qualify for China trademark application for registered trademarks in China. However, certain words or symbols, like countries names, international organizations names and symbols (UNESCO, United Nations) cannot be registered as trademarks.

The Validity of China Trademark

From the date of registration, ten years is the valid period. Where the trademark registrant intends to continue to use the registered trademark beyond the expiration of the period of validity, an application for renewal of the registration shall be made within six months before the said expiration. If you go to renew the trademark after the grace period, you have to pay extra charges for the renewal. Your trademark may be subject to cancellation if it has not been used within the continuous period of 3 years from the date of registration.

If the trademark application is in compliance with the relevant provisions of the Chinese Trademark Law, the application is preliminarily approved and published. Within a period of 3 months from the date of the publication, any person may file an opposition against a Chinese trademark application.

Share with friends: