What we are covering today?
- What is considered a trademark in China?
- Search the Trademark Database before Filing for Registration
- The “First-to-File” system
- Considerations for registering your trademark
- Trademark Hijacking
- IP Squatters
- Who should be registering their brand in China?
- Why is it important to new market entrants to register their brand?
- What should be your trademark strategy in China?
Why should you be concerned by protecting your brand in China?
Because of:
- IP Squatters
- IP Hijackers
- It is so simple to register – anybody can do it – your suppliers, your customer, your agents, your employees, etc.
You should know or identify how much is your brand worth to you and what is that financial value that you can place in your brand.
What is considered a trademark in China?
Any visual sign, if it can be used to distinguish the goods or services of one natural person, legal entity or any other organization from that of others, including any word, design, letters of an alphabet, numerals, three-dimensional symbol, combinations of colors, and their combination, maybe filed for registration.
Registration of each items, for example:
Who should register their trademark in China?
- For a Trading Company in China
- For a Manufacturing Company in China
- For a Service Company in China
- For a China Representative Office
- For a ‘’temporary’’ Liaison Office
- For a ‘’temporary’’ Marketing Office
- For an overseas company with no subsidiary in China
- For a company ‘’about’’ to market in China
- For individuals about to travel to China representing their company
- EVERYONE DOING BUSINESS IN CHINA
Search the trademark database before filing for registration
Although not required prior to filing an application, you are encouraged to search the China trademark database to see if any mark has already been registered or applied for that is like your mark and used on related products or for related services.
The ‘’First-to-File’’ System
The disadvantage of the ‘’First-to-File’’ system is that law in China allows anyone to register a trademark irrespective of whatever it is owned by another party or is in use in another jurisdiction. If a trademark is not currently registered in China, anyone can lay claim to it.
This means that your trademark could be legally owned by another property, leaving you locked-out of China.
Considerations for registering your trademark
- Searching that your trademark is available;
- Choosing what you want to register – for example, logo, brand name, company motto, words, design, numerals, letters of the alphabet, combination of colors, three-dimensional symbols, etc. Avoid using the names of cities, countries and Chinese presidents.
- Choosing which entity will own the trademark – will it be your parent company / a holding company;
- Searching which classes and sub-classes of goods and services you wish to register your trademark. Every jurisdiction has a class list with a series of classes and sub-classes highlighting the individual goods and services. A company needs to properly investigate each class and sub-class so they are 100% protected, both in the short and long term.
Who are the enemies?
Trademark Hijackers
This is when a local Chinese business registers a trademark in China which is owned in another jurisdiction by another unrelated company.
The registrant than uses the success of the brand elsewhere and demands license fees or even sues for infringement when the original products or services enter the Chinese market.
This form of hijacking can tarnish the image of the brand, especially if the infringer sells inferior goods or provides inferior services under the same trademark.
IP Squatters
This is a serious problem for the late registrants and occurs when foreign trademarks that are perceived to hold future value are registered in China, and nothing is done with it until the original overseas registrant enters the Chinese market to manufacture or sell goods and/or services.
At that point, the Chinese registrant can claim trademark infringement and ask for license fees or sell the trademark at great profit.
If somebody owns your IP in China, what does this mean for you?
- It is illegal for you to sell any goods or services bearing the trademark in China;
- It is illegal for you to manufacture or source goods from China bearing the trademark;
- It is illegal for you to provide a service locally in China bearing the trademark;
- It is illegal for you to market yourself in China bearing the trademark;
- Likely that any goods you do manufacture in China will be seized by Chinese customs as counterfeit goods;
- Possible for the Chinese registrant to freely manufacture goods under the trademark and export them to any country when you have not registered your trademark, effectively taking business that should be yours
Your trademark strategy in China for brand protection (and on eCommerce platforms)
- As mentioned, your first should be to conduct a search as to whether your trademark has already been registered or not under which classes/ sub-classes.
- Classifications of Goods: Class 1-34
- Classification of Services: Class 35-45
- If there are no problems, then file as soon as possible. It is any easy and quick to file process.
- Engage a monitoring service to see whether your brand is already being promoted/used online.
- If you are engaged in eCommerce in China adopt an online brand protection strategy – invest in the technology
- If you find that somebody is in the process of filling for your trademark and it has not nee registered yet OR somebody has filed your trademark, choose an IP lawyer in China to represent you to understand what options you have in taking counteractive action – for example, civil litigation, customs seizure of goods or appropriate enforcement strategies
Tips on how to find infringing products online
- Search for names which are identical or similar to your brand or product name.
- Search for your brand or product name in Chinese. Chinese consumers like to translate brand names into Chinese. Where possible ask a Chinese colleague or use a translation tool to search e-commerce sites in Chinese.
- You may also find more results by conduction your search through a Chinese search engine (baidu.com or bing.com)
Are the Chinese platforms helping in the fight of infringement?
Yes, they are. Especially the following platforms:
- Alibaba.com
- JD.COM
- vip.com
- suning.com
Application process to file your trademark – Document List
- A simply signed Power of Attorney
- A duly completed trademark search/registration order form highlighting the classes and sub-classes.
- A soft copy of the trademark in JPEG format
- A copy of the identity proof of the applicant (whether it is an individual or corporate entity)
Companies producing goods for the Chinese market should safeguard their business via a three-step strategy.
- Register the IP rights
- Monitoring e-commerce sites and social media sites and search engines
- Request take-down notes of counterfeit or infringing goods
‘’Research is creating new knowledge and understanding’’
‘’Pre-emption by action is the best protection”
The importance of protecting your brand
- Protect your brand and use it in the Chinese market
- Helps to clear customs and trade with your trademark on cartons, labels, etc.
- Helps to provide services in China with your trademark
- Mean nobody can take your brand away from you
- Helps to develop repatriation strategies – for example, trademark licensing agreements
For any information on how to protect your brand in China, please contact our team by email at info@opkofinance.com or by phone at +852 2654 8800/+86 187 177 31958
