Timely registering is crucial as China is a „first-to-file“ country
Expanding one’s business to China brings along a multitude of questions and at one point, one must also think about safeguarding their business. You wouldn’t want to lose out on your logo, brand name or product name by finding out someone else is using these in China. This is where trademark issues come into the picture. Considering the complicated laws and regulations of China, this should not be taken lightheartedly.
Keep reading to learn about the importance of applying for a trademark in China and what is needed to keep your business safe!
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Why should one register a trademark in China?
A trademark is crucial, as it provides legal protection to a business. As China is a „first to file“ country, whoever registers a trademark for a product will possess all exclusive rights to distribute and sell the product. This is an significant difference from the “first to use” law in countries such as the U.S., U.K. or Canada.
Even if your company has no active business plans for the Chinese market in the foreseeable future, registering a trademark is still one of the first steps to take. Here’s why:
- Your company, named ABC, makes women’s bags and the whole manufacturing has been based in China over the past 5 years. Now if someone were to register the ABC trademark for bags, the other company gets the trademark. Owning this trademark, the company will have every legal right to stop your ABC bags from leaving China, as it would these are violating its trademark.
In-N-Out, a famous fast food chain hailing from California, was a victim of a similar case. While they had no plans to enter the Chinese market, a doppelganger named CaliBurger emerged in Shanghai, which clearly took some of its “inspiration” from the American fast-food chain – going so far as to copying the entire visual identity and menu items of In-N-Out. The sides eventually made a confidential agreement, speculated to have been rather costly to In-N-Out, which followed by CaliBurger eventually changing up some of its décor and names of menu items.
Companies often worry about direct competitors, but one should also be on guard about own partners.
Get to know the law
While the media in the West loves to publish stories of Chinese businesses going loosely around IP protection, the authors fail to understand and portray the situation truthfully. Namely, the issue lies with the foreign companies not fully comprehending the Chinese IP laws. In order to be protected, it is advised foreign companies register their trademark before even entering the Chinese market. Otherwise, there is no real legal basis to accuse anyone of “infringement”.
How to register a trademark in China?
Any organization, natural person or legal person can file an application with the Chinese Trademark Office. The entity will then acquire the exclusive right to use a trademark for the goods produced, processed, selected or marketed by the entity.
Of course, there are some restrictions to what can get registered – for example a design containing official government insignia will get rejected. Moreover, one can’t register a trademark that contains a trademark of someone else.
Assuming there will be no major setbacks along the process, e.g. incomplete paperwork or objections, it should take approximately 16 months to register a trademark after the application has been received.
- Within 3-4 months of receiving the materials, the Trademark Office will issue an Official Receiving notice. Generally, the applicant must submit one copy of the Application for Trademark Registration and five copies of reproductions of the trademark to the Trademark Office.
- For a domestic application, the documents must be in a local language – Chinese. If the mark is in a non-Chinese language or non-Chinese materials are a part of the application, a translation must be provided.
- An examination period of 9 months follows, needed to verify whether the mark meets the legal requirements.
- As examination period commences, there is a period of 3 months where anyone can file an opposition.
- If there are no oppositions filed during this period, the applicant will be issued a Trademark certificate of registration. The mark is valid for 10 years and is renewable.
What about priority rights?
Priority right allows one to file a consecutive application in any other country for the same trademark, effective as of the date of filing the first application. It’s also possible to obtain a priority right in China:
- An application for a trademark has been made in a foreign country, and the entity has an application date and number for reference. Moreover, this trademark is currently not registered in China.
- The Chinese trademark must be the same as the one from home country and used for the same product.
- The applicant for both applications must be the same entity or be able to prove of being the successor of interest.
- If applicable, this will make things easier – a bilateral treaty between China and home country, recognizing the priority right of the trademark from the home country.
When filing for a trademark registration in China, you can simultaneously file for a priority right. A legalized copy of the first trademark application is needed for this.
Notes before registering your mark
Below are some important points to be aware of before registering:
- In case you haven’t entered the Chinese market yet – foreign applicants who do not hold a residency or place of business in China, but wish to file directly with the China Trademark Office must do so through a register agent.
- Note, that registering a trademark in roman letters does not automatically grant protection against the use or registration of the same or similar trademark in Chinese characters. We advise to register a Chinese version of a foreign trademark to avoid a similar or direct translation of your mark getting registered by someone else in Chinese characters.
- A trademark in China will be valid for ten years from the date of registration. You may request a renewal, which must be filed within 12 months prior the expiration date (there is also a 6 month grace period for a surcharge). One can renew their trademark for each time for a period of 10 years.
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