China Trademark Registration

Register your brand in China

China Trademark Registration

What is a trademark and why is it particularly essential when doing business in China ?

A trademark is a distinctive brand or mark used by an individual to identify that the product or service originate from one and only source. This mark 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 and therefore have certain expectations towards the company. All kinds of products or services are subject to trademark infringement especially in China where counterfeit product are very common (China does not recognize unregistered trademark rights). Protecting a company’s trademark is a strategic move in the long term and should be carefully considered.

China Trademark Registration

China Trademark RegistrationProtect your company’s image and product/service

China Trademark RegistrationRequired documents : Copy of Business License + filled Trademark Application form

China Trademark Registration30 days to set up ™, 18 months minimum for ®

China Trademark RegistrationNo annual fees to maintain the trademark after registration

China Trademark RegistrationNo additional fees for the first 10 years

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Registration of a trademark in China

Why you need to register a Trademark in China?

Every few months, my law firm gets contacted by a Western company that wants us to pursue a bad faith trademark case against a company in China. Typically, the Western company wants to pursue litigation against a Chinese company for having trademarked what the Western company perceives to be their tradename or trademark. These cases usually range from very difficult to just plain impossible.

Here are some examples as to why.

Someone Registers “Your” Well-Known Mark in China.
China considers a trademark to constitute a well-known mark if it is well known in China. Coca Cola and maybe now Starbucks would qualify under this standard. AT&T might not. Your trademark almost certainly does not. If you really have a well-known mark and someone in China registers it, you have a bad faith filing. I cannot even imagine what company would think it better to sit back and wait for someone to register “its” trademark in China and then sue that registrant for bad faith filing, as opposed to simply going ahead and registering that trademark in China.

Your Agent Registers “Your” Trademark in China. 
China’s trademark law states that when “any agent or representative registers, in its own name, the trademark of a person or entity for whom it acts as agent or representative, without an authorization there from, and the latter raises an opposition, the trademark shall be rescinded and prohibited from use.”

China’s Trademark Office states that “agent or representative” should be very broadly construed and that the authorization must be unambiguous and in writing. This all sounds good and the problem here is not the law itself. The problem is proving that the person who registered “your” trademark in China was your agent.

The most likely person to register “your” trademark in China is someone on the inside. The person best positioned to know the value of your trademark is going to be someone at your China OEM manufacturer, someone at your joint venture partner, or one of your own employees. Under the law, none of these people should be allowed to register your trademark on their own behalf and it is very likely none of them did. This law has now been around long enough so that if your OEM manufacturer, joint venture partner or employee has any brains at all, they will not register your mark in their own name; they will instead have their cousin in Xi’an or in register it, leaving you with the near impossible task of showing the linkage. It will always be cheaper, easier and more certain to register your trademark than to bank on being able to prove that the person who now legally owns “your” trademark in China secured it illegally.

Someone Preemptively Registers “Your” Trademark in China in Bad Faith.
China’s Trademark Law also provides that a trademark application shall not be allowed if it is being done to “preemptively register by unfair means a trademark that has already been used by another person where such mark has achieved some degree of influence.” China’s Trademark Office states this provision applies to trademarks that have not yet been registered in China and it defines “some degree of influence” to mean that the mark has been used on a product in China and Chinese consumers have come to identify that mark with a particular product in China. This means this provision will probably never apply to foreign marks used outside China. China’s Trademark Office defines “unfair means” as having a motive for filing that violates the principle of good faith and fair dealing, as defined in China’s civil code.

Factors for determining bad faith in this situation are:

a. Whether the parties had prior business dealings with each other.

b. Whether the parties have had past disputes.

c. Whether the registration was for an unfair motive, such as to force the other party to enter into a business relationship, to force the other party to assign over its mark or to force the other party to pay for having allegedly infringed on the mark.

Again, the law sounds good, but the proof problems are certain to be substantial. And again, it will always be cheaper, faster and more certain just to register your mark in China.

In every single instance when someone has sought to retain my law firm to pursue a bad faith trademark claim in China, we have counseled them against it as the costs are too high as compared to the likelihood of success. And in every single instance when someone has sought to retain my law firm to pursue a bad faith trademark claim in China, about all I can think about while I am telling them of how difficult their case will be is “why the heck didn’t they just register their trademark in the first place?”

As we have said many times, the only real solution to protecting your mark in China is to register it in China early and to, at minimum, register every mark that you will be using in China, in both any foreign language and Chinese language you will use. If you wait to file, you are simply inviting a competing registration that will cause you major problems in China. China is a first to file jurisdiction and most be approached that way. If you wait to file until after your brand is already established in China, you are just inviting trouble. There is a good chance someone else will have registered your mark and it is almost certain you will not be able to do anything about it.

 Trademark Registration in China

The Rules of Registration and First-to-File

It was until the March 1 of year1983-almost two years after China’s

accession to the World Intellectual Property Organization (“WIPO”) in

1980-that the first Trademark Law of the People’s Republic of China came into force. In February of the year of 1993 the Trademark Law was revised, and after China’s entry into WTO it was revised again on October 27, 2001 in order to meet the requirements of the Trade-related Aspects of Intellectual Property

Rights (“TRIPS”).

In addition to improving its national trademark legislation, China had

also taken steps to bring its trademark protection laws in line with the

international standards and practice. Before being a member of WTO, China acceded to the Paris Convention for the Protection of Industrial Property in 1984 and became its member in 1985. China became a party to the Madrid Agreement Concerning the International Registration of Marks in 1989 and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks in 1995. . Moreover, China became a party to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks in 1994 .

The above-mentioned national laws and international laws established

and ensured the most important rules related to trademark protection: the registration rule and the first-to-file rule.

The registration rule mainly means that (1) only the registered

trademark is protected in China and (2) one registration is valid for ten years starting from the Date of Registration and can be renewed indefinitely, each time lasting for ten years.

According to the First-to-File doctrine, the first applicant to file an

application for registration of a trademark will pre-empt all later applicants. This further implies that the prior use of an unregistered trademark is generally irrelevant, unless such unregistered trademark is a so-called “well-known” trademark. Moreover, this means the one who registers a trademark legally has the right to forbid others from using of the same or similar unregistered trademark in China.

Filing an Application

There are two ways of submitting the application for a foreign applicant.

One is the foreign applicant files an international application subject to the Madrid Protocol and in such international application designates China as one of the protection domain; the other is the foreign applicant directly files the application with CMTO. However, regardless of which way elected, such foreign applicant shall designate a qualified trademark agency to handle the application in China. Considering that an international application is morecomplicated than a direct application with CMTO, and the correspondence under an international application is the big issue that may cause problems, therefore the simplest way to register a trademark in China is to file a direct application with CMTO. In this way, what a foreign applicant

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