China Trademark Registration | Frequently Asked Questions- Part 2

Most of the cases it is noticed that foreign businesses pay less interest to registering their trademark in China. But it is very crucial not to forget that China does not provide protection for unregistered trademark under common law in recent days. The price of China trademark registration is colossal and the foreign firms having enterprise interest over right here simply can’t forget about the need for registering trademark in China.

After the previous article on tricky Q-A on China Trademark Registration, we are going to discuss some of the frequently asked questions on the mentioned topic over here.

Frequently Asked Questions on China Trademark Registration:

Is there a time frame for the trademark registration approval? 

The average time frame for the registration approval is 15 months, if no objections or oppositions arise.

If someone registers a trademark in China, will he/she gets protection in other territories?

No. A registered mark is protected only in Mainland China.

Is it necessary to sign a Power of Attorney?

Yes.

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

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.

Can an unused trademark registration harms latter?

Yes. A registered mark can be attacked on the ground of non-use.

What are the types of trademark that can be registered in China?

>> Words

>> Names

>> Devices

>> Certain 3-dimensional shapes

>> Slogans

>> Colours

>> Sounds

>> Get-up or trade dress

>> Combination of all of the above elements

>> Collective marks

>> Service marks

>> Certification marks

>> Well-known marks

What are the phases of application after a trademark has been filed in China?

There phases are there: 

Examination, Publication, Registration

What type of trademark is not registrable?

The following marks are prohibited from registration:

>> Marks that are against the moral standards or public order of China

>> Generic words or terms

>> Symbol, flag, or name of a state, nation, region, or an international organization

>> Marks that lack distinctive qualities

>> Marks that are used primarily to indicate a geographical location name

>> Marks that may mislead consumers

Does China use the “Nice Classification” system?

Yes. China uses the system of Nice Classification.

Does the Community Trademark apply for China?

No. Community Trademark does not apply for China.

Is it possible to cancel a registration?

Yes. The following are grounds for cancellation:

>> Descriptive mark

>> Misleading and/or deceptive mark

>> Lack of distinctiveness

>> Generic mark

>> Mark is a geographical indication

>> Functional mark

>> Violation of public policy or principles of morality

>> Unauthorized marks by competent authorities pursuant to Article 6ter of the Paris Convention

>> Inclusion of a badge or emblem of particular public interest

>> Using of the mark in a misleading manner

>> Prohibited marks in this jurisdiction

>> Application was made in bad faith

>> Registrant’s breach of a technical provision of the law

>> Fraudulent registration

>> Use Requirements under Section V.G. are not met

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The Value of Chinese Character Trademark for Renowned Brands

Intellectual property rights infringement also known as trademark squatting is rampant in China. It is particularly the American brands and companies that are more vulnerable to trademark squatting in China because of two reasons:

First– US brands are hugely popular and carry enormous value to the customers and consumers. So the chances are high for the fake Chinese companies to make a massive profit using the name of a renowned US brand.

Two– It has been noted that most of the US companies don’t have the knowledge about how they can protect their trademark in China. Because 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. Even the renowned e-commerce sites such as Taobao.com will not be able to take any action against any listing that is infringing on your trademark without a Chinese trademark.

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.

 

Importance of having a Chinese character trademark

If a foreign trademark has practical meaning in its language, the corresponding Chinese character(s) containing the same meaning may be used as its Chinese trademark. For instance, the corresponding Chinese trademark of “APPLE” is “苹果” whose Chinese pinyin is PING GUO, “SHELL” is “壳牌”(QIAO PAI), and “VOLKSWAGEN” is “大众”(DA ZHONG). The provisions introduced by the new Chinese Trade Mark Law to get China trademark certificate, highlight the urgency of choosing the right Chinese characters trademarks, getting broader registration that would also cover nicknames to pre-empt squatting, and having the Chinese characters mark reviewed and assessed by locals to ensure it does not bear any negative or degrading meaning in Chinese.

The original brand name may be a priority, but your business, products or services will also become known by a name in a local dialect. Unless you develop a strategy early on, you may find that the market has chosen a brand name for you. To be successful in China, US and European firms should develop an integrated trademark protection strategy.

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