What Next After Registering Trademark in China?

China’s trademark regime follows a first-to-file system and so does not recognize international trademarks if they are not registered in the mainland. Once a trademark right is granted in China, the trademark owner enjoys the exclusive right to use the sign in relation to the goods or services covered by the trademark, and may prohibit others from using it without prior consent. Like many other countries, China uses NICE classification.

However, a key difference in Chinese trademark practice is subclasses. Chinese Classification Table for Similar Goods and Services (Classification Table) is the main criteria that examiners in China adopt in determining whether goods/services are similar. The Classification Table is mainly based on NICE Classification, but also includes nearly 2,000 items of goods and services that are commonly used in China but not included in the NICE Classification.

Foreign applicants without residency or place of business in China are required to submit trademark applications through a local Chinese trademark agent who will deal directly with the CTMO. The China Trademark Office, or CTMO has issued requirements that must be met in order to approve your trademark application in China. Before you begin the process to register your mark, be sure that you have met the following requirements to obtain a trademark registration in China:

  • The mark must be available to use.
  • The mark must be easily differentiated from other registered trademarks.
  • The mark cannot be descriptive of the goods or services provided.
  • The mark should have a positive connotation.

Cancellation on the basis of non-use

The authority of mainland China stipulated that a registered trademark, including a trademark for goods, a service mark, a collective mark and a certification mark, refers to a trademark that has been approved and registered by the Trademark Office. Chinese trademark law states that if in the three years following the mark’s registration the mark has not been used for a continuous period of at least three years without due cause, it might be subject to cancellation proceedings.

It can take years of painstaking effort for a trademark owner to develop a strong brand. A trademark owner, however, must be vigilant in protecting the brand or the goodwill associated with the brand can be lost.

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.

Nevertheless, Chinese trademark law provides foreign companies in particular with two essential legal remedies to take action against an unlawful trademark application in China. Registered trademarks shall be so distinctive as to be distinguishable and shall not conflict with any prior right acquired by another person. trademarks mean signs which are controlled by organisations capable of supervising certain goods or services and used by entities or individual persons outside the organization for their goods or services to certify the origin, material, mode of manufacture, quality or other characteristics of the goods or services.

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Strategic Advantages of Registering Trademark in China

In the view of the prominent China trademark lawyers, China patent office has processed more patents than any other country in the world. China’s trademark applications last year reportedly mainly concerned electronic devices, and computing and digital telecommunications technology. Overall, IP filings have increased by 5.8 percent on the previous year, representing the eighth consecutive yearly increase. Trademarks protect your business name, product names, Domain names, logos and slogans. Aware of the very strict “first to file” principle, they identify, apply and register trademarks belonging to competitors who have forgotten or not yet taken steps to register them. That is the primary reason China lawyers advise their clients to give utmost importance to register their trademark in China.

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.

How would China Trademark & Patent Lawyer Be Useful to your Business

To be able to get to have smooth-sailing operations without being stressed with all the technical details in one of the world’s leading business countries, hiring a Chinese law firm would be your best bet. The right Chinese lawyer can make a huge difference to your business. Attorneys of the China trademark & patent law office can add value in the obvious ways, helping to avoid early mistakes in complying with the Chinese regulations. China lawyers will help you to secure the copyright, trademark and trade secrets of your firm, tech products and inventions.

Can trademarks without the purpose of use be terminated?

Trademark squatting is a major issue in China. One of the greatest challenges that many foreign companies face when entering the Chinese market, is that their brand has already been registered as a trademark by a Chinese company. In order to tackle this problem, Chinese authorities have taken a few effective steps and made changes in the trademark law. The “purpose of use” added in Article 4 of the revised Trademark Law is the basic stone for all legal norms to curb the application for registration of malicious trademarks. According to the revised Trademark Law, applicants should be required to submit evidence of “actual use” or “honest use intention” at the time of registration of the trademark application.

Trademarks in China can be registered in different forms namely word mark, label, logo and device mark. Besides registration, the prior use of a trademark can also be protected in China. For example, a bona fide prior use of an unregistered mark can defend against the tort claim of infringement. An unregistered well-known trademark can be protected against copy or imitation by a third party on similar goods/services, through oppositions or invalidations, as stipulated by the China Trademark Law. China has had specialist IP tribunals in the Chinese courts to deal with patent (and other IP-related) cases.

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