Intellectual property protection is still considered one of the most important business challenges in China. Piracy and copycatting of famous and not-so-famous brands are an ever-present problem. Our suggestion is that any company considering any operation is China – including production, sourcing, or selling to Chinese consumers should take steps to protect their trademarks immediately. And yes, a registered trademark is actually useful in preventing and/or stopping infringement. If you run into fraud, you can file a complaint with the State Administration for Industry and Commerce, which is “quite responsive” and can fine offenders, confiscate goods, and acting in concert with police can even take criminal action against the worst violators, who face imprisonment and hefty fines. You can also enlist the PRC customs officials to stop the import and export of infringing goods.
Home Country Registration not Enough
Most foreign companies believe that because they have registered their trademark in their home country their intellectual property will be honored in other countries. This is not so. Chinese companies and authorities do not recognize overseas registrations and are bound to follow Chinese law when determining who has the rights to a name or logo. No matter how unfair the IP violation is, you will be virtually powerless in China to get justice unless you have secured Chinese registration for your trademark through the China Trademark Office.
Be the First to File
China is a “first to file” country, which means that the trademark office generally awards registration for a specific trademark in a specific product category to whomever files for it first—regardless of whether the trademark truly belongs to the filer. This rule, while expedient, makes things easier for China’s numerous trademark hijackers to jump in on unsuspecting companies entering the PRC market, gaining registration before the legitimate owner in order to sell the brand back to them.
Four Steps to Register a Trademark in China;
1) Check the present status of your trademark in China to see if the same or similar marks are available or if they have been taken by others. A thorough background check can determine where you stand and how to proceed.
2) If no one else has registered your trademark, the next step is to decide whether to register your English-language logo or brand, and/or create a separate logo or brand using Chinese characters. Registering separate versions of English and Chinese logos or brands offers broader protections and flexibility.
3) Trademark registration in China is product specific. China follows the World Intellectual Property Organization’s Nice classification, which lays out 45 classes of goods and services. In addition, China has hundreds of sub-categories for those 45 classes. Unfortunately, China generally allows the same or similar logos to co-exist in different classes and sub-classes. Other countries don’t allow this to avoid consumer confusion.
To protect yourself, you may need to file for registration within several different categories in order to cover every product you sell or intend to sell in the nearer future. It’s a common strategy to block the sub-classes in your categories to prevent someone else from registering the same or similar mark in the same category as you.
4) Once decided what to register and in which categories/subclasses registration is to be made, the application can be submitted. If there are no conflicting registrations of similar marks you will receive the official certificate within approximately 18 months after submission of the application.
If you have not yet registered your trademark in China, please contact us for an initial talk. We can quickly (free of charge) check the current status of your trademark with the China Trademark Office, so you know where you stand, and what your options are. We can subsequently take you through the registration process.