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.