Foreign companies entering the Chinese market, even those who have experienced success in other countries, must be conscious of the unique rules surrounding intellectual property protections in China. Even well-recognized brands may not receive legal protection if they do not follow the appropriate steps.
By familiarizing yourself on how to protect a brand in China and the country’s complex trademark rules, you can better prepare your business for success.
First to File System
It is important for foreign business owners to understand that China is a first-to-file system. This means that China does not recognize international trademarks even for well-known brands.
Just because a brand is recognized in another country does not mean that the trademark has legal protection in China. Instead, businesses must take the extra step and register their trademarks in Mainland China.
Selecting a Trademark in China
Trademarks identify the specific or primary use of a good or service. They help consumers distinguish their companies, products, and services from those of others.
Trademarks may consist of words, letters, numbers, devices, shapes, color combinations, or a mix of all of these.
To register a legal trademark in China, your selected trademark must meet the following criteria:
- It cannot be the same or similar to the name or a flag of a state or international organization
- It must be easily distinguishable from the trademark of competitors’ goods and services
- It cannot discriminate against a nationality
- It cannot promote fraudulent advertising
- It cannot provide a functional definition or refer to a technical effect
- It must be available for registration
Companies can search for existing trademarks to see if there is a match for what they are considering using for their business.
Dangers of Not Protecting a Brand in China
Because China only acknowledges trademarks registered in its own jurisdictions, companies that do not protect their brand in China risk their brand being diluted by trademark squatters and counterfeiters.
If they do not have trademark protection in China, they will likely lose any infringement claims, even if they sell legitimate goods in other countries with the same brand.
What is worse, established brands may face legal action against them that are brought by companies that were first to file. Even if the company can ultimately prevail in court, it will not be without incurring substantial legal costs and loss of time.
Benefits of Registering a Brand in China
Registering a trademark in China allows you to protect your brand in China, meaning you could avoid the problems discussed above. You can also protect your business from gray market suppliers that knock-off your goods and sell them online.
By having proper Chinese intellectual property, Chinese customs can seize copycat goods and prevent them from ever entering the market, which should reduce the impact on your business.
Registering a Trademark in China
To register a trademark in China, you have the choice to either:
File the Application with the China Trademark Office
You can file the application with the China Trademark Office. If you do not have residency or a place of business in China, you must submit your trademark application through a registered agent. Using this option allows you to have greater control over the registration process because you can select which class and subclass to file under and which products and services will be covered by your selected trademark.
You must select classes and subclasses that properly identify your goods or services. Make sure that you include all classes and subclasses that apply to your products or services.
File the Application with the World Intellectual Property Organization
Alternatively, you can file the application with the World Intellectual Property Organization based on the country where the mark is currently registered. With this option, the examiner determines which subclasses are covered by the trademark.
Timeline to Register Your Trademark in China
The trademark registration process in China takes an average of 15 months from the date of filing for preliminary approval to the publication of the trademark. However, this process can take longer if there is opposition to the trademark.
Trademark examination assistance cities are located nearby several major cities in China, including:
There are also receiving centers throughout various provinces. This availability helps speed up the registration process as much as is possible.
Registering a Brand in Chinese Characters
After registering your trademark in your own language, you should then consider registering it in Chinese characters so that you can avoid possible infringement by counterfeiters. Only protecting your trademark in Roman characters will not provide full protection from trademark infringement in China. Instead, you must register the same or a similar trademark in Chinese characters.
Other firms can use your unregistered trademark, which can diminish the value of your brand or lead to the loss of your customers by counterfeiters. The process of selecting a trademark is complex because you must use a combination of characters that provide the appropriate meaning and relevance that will help consumers get the proper image of your brand.
Major companies have made serious errors – and felt the effects of them – when they did not consider the different translations and phonetic meanings behind certain combinations.
There are various strategies that companies can take to have a unique and culturally appropriate trademark, including using a literal translation, phonetic translation or combination of a literal and phonetic translation.
Updating Your Trademark
In January 2019, the newest version of the Nice Classification table went into effect, which included additional products and services and updated the specifications of certain goods and services. Companies that have an existing registered trademark may need to update their trademark protections based on these new parameters.
Where to Get More Information
The trademark registration process is complex, and having an expert partner on site can definitely help. This is especially so given that receiving a rejection can make your brand vulnerable and expose you to potential liability.
Contact Horizons today for guidance on the trademark registration process and bespoke advise from our local experts on how to protect your brand in China.
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