How to Perform a Flawless Registration of Trademark in China

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.

Are there any benefits from a pre-filing use of the trademark in China?

The benefits from a pre-filing use are minimal since rights are obtained via registration. However, the applicant can use this to demonstrate the mark’s distinctiveness and overcome opposition on the ground of non-distinctiveness.

Chinese Character Trademarks

In China, the Chinese language version of your brand can be just as important as the English language version. If you don’t have a Chinese version of your trademark, you are strongly advised to create one and register it. Otherwise, the local market will create one for you and someone else might register it. It should be noted that the CTMO considers foreign equivalents of marks during the examination process. Chinese written language is comprised of characters, each of which not only has a sound, but also a meaning. There is both a “traditional” set of Chinese characters and a modern, more simplified, set of characters having fewer strokes. China is currently using the modern version. So, it is advised to seek assistance from a trademark attorney for registering trademark in China.

Perform a Flawless China Trademark Search

When considering a new trademark, perform online China trademark search to determine whether others use that mark, registered that mark, or applied for a registration. Before you settle on a name, logo, or domain name, make sure it is not already trademarked. Check for the exact name you want to use, as well as similar names.

What rights does trademark registration provide?

A trademark not only gives the trademark owner the exclusive right to use the mark but also allows the owner to prevent others from using a similar mark that can be confusing for the general public. 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. In principle, a trademark registration in China will confer an exclusive right to the use of the registered trademark. This implies that the trademark can be exclusively used by its owner or licensed to another party for use in return for payment. Registration provides legal certainty and reinforces the position of the right holder, for example, in case of litigation.

Two important requirements after your trademark is registered in China

First: Keep a close eye on the possible infringement of your trademark. Closely monitor third party applications for similar trademarks.

Second: Separately register the trademark with China customs. Unless your trademark is registered in China customs, they will not seize allegedly counterfeit products under your trademark.

Instead of doing anything by yourself, it is always safe to seek advice from the expert China trademark lawyers. Specialist trademark attorneys have better resources and efficiency to perform a flawless China trademark search. It will also likely cost you less to pay a professional to do a search than it is to defend an infringement that may result in an expensive legal battle.

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Why Companies Should Act Swiftly and Appropriately to Register Trademark in China

China has had specialist IP tribunals in the Chinese courts to deal with patent (and other IP-related) cases. Since 2014, three specialized IP courts in Beijing, Shanghai, and Guangzhou hear all first instance IP matters in these regions. These courts include judges with IP training and background to facilitate the proceedings.

The Chinese government has pivoted to embrace the idea of protecting intellectual property and has tried hard to combat worldwide misconceptions about China’s patent system. These new findings indicate that trademark protection in China is stronger than once believed.

The “First to File” trademark registration system in China

Unlike the United States and other European countries, in China there is no prior-use or intent-to-use requirement needed before registering a trademark nor are common law rights recognized. China recognizes a “first to file” system, which generally means that the trademark right belongs to the first person who properly registers the mark in China. In other words, any party, whether or not it intends to use the mark in the stream of commerce, may register a trademark in China. In China, SAIC (State Administration for Industry and Commerce) is responsible to handle the applications of trademarks.

Trademark Classification Framework of China

  • If a trademark comprises English letters or Chinese characters, it is treated as a word mark and will be compared with other prior word marks to determine whether similar prior trademarks exist.
  • If a trademark is a device mark, it will be compared with prior device marks in accordance with the International Classification of the Figurative Elements of Marks (the Vienna Classification).
  • For composite trademarks that combine both word and figurative elements, the mark’s word and device elements will be examined separately.

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.

Many people think that weak Chinese trademark law is responsible for the growing number of infringement incidents, but the reality is China’s trademark law already has a number of provisions to combat squatting. The truth is, when a foreign company comes to conduct business in China, either they don’t take trademark registration seriously or they take wrong steps on battling the trademark infringement legal disputes.

However, the good news is over the last couple of years, several foreign firms especially from the USA have won many trademark infringement cases giving hope to other overseas companies that a tougher line from Beijing is adapted to act swiftly and appropriately to the long-existing trademark squatting practice.

Always be in touch with the Chinese legal experts as it will pay high dividends. China is the country that has its unique legal system that can be hard for any foreign business owners to navigate. Accompanied with the expert China trademark lawyer is could be your best bet to defend your brand. Legal advisers will not only help you fight for your trademark rights but also give you necessary suggestions regarding the course of action you should take.

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