In the era of a knowledge-based economy, intellectual property rights-including trademarks-are significant to corporate brand building, market expansion, and competitiveness.
Protecting a company’s trademark is a strategic move over the long term and should be carefully considered. Acadia strongly recommends that you register your trademark in China when you begin any business activities.
Acadia corporate services consultants can support you at each step of the registration process.
Trademark registration in China
Arriving in China and finding close copies of your products for sale under your brand may not be the welcome you were hoping for, but it is more common than you might think. Fortunately, China’s intellectual property law has developed to provide stronger legal tools to combat brand infringement. Such protections are not automatic: a company must use the appropriate channels to have IP rights recognized and enforced. Given the prevalence of counterfeiting and piracy, it is crucial for brands to register their IP rights in China, even if they do not yet intend to conduct substantial business there.
China’s trademark law operates on a first-to-file principle: the first party to file for registration is generally afforded exclusive rights. That has led many brands to register early to reduce the risk of “trademark squatting”-where third parties seek to register marks associated with existing brands for financial gain-sometimes forcing companies to pay significant sums to recover rights.
China enacted an updated Trademark Law in November 2019 that restricts registration where there is no intention to use the mark, directly targeting some forms of squatting and creating pathways to challenge bad-faith filings. Even with these improvements, early registration remains the most practical way to avoid lengthy disputes. Fighting a squatter through legal procedures can be slow and difficult, so registering as early as possible is usually the better commercial path.
Under examination practice at the China trademark authorities, among the issues commonly assessed are the following:
- Availability: the mark should not conflict with prior rights, including well-known marks that may not be formally registered in every case. A comprehensive search of the official trademark database is recommended.
- Distinctiveness: the mark should distinguish your goods or services from others.
- Non-functionality: features that exist primarily to achieve a technical effect are generally not registrable as trademarks.
- Legality: the mark must not be contrary to law or misleading in ways such as improperly resembling names or emblems of states or international organizations.
Register in both English and Chinese
Many Chinese consumers find it difficult to recognize and pronounce non-Chinese wording and may adopt or popularize their own Chinese version of a trademark, which may or may not align with your international brand. The US retailer Best Buy withdrew from the Chinese market in 2011 after limited success; one contributing factor cited in commentary was its Chinese brand rendering, “Baisimai,” which some consumers associated with an unhelpful literal sense along the lines of “think many times before buying.” Managing trademarks in China benefits from an understanding of language, culture, and what resonates locally. Getting the Chinese side of the brand right is an important component of success.
Acadia can help your company avoid unflattering or confusing translations of foreign trademarks. Our Chinese-speaking consultants can help you develop a Chinese-language trademark using recognized approaches, including transliteration, phonetic adaptation, and conceptual naming.
China trademark protection and enforcement
Registering a trademark in China does not remove the need to monitor the market. It remains important to stay alert for infringement. Acadia can help you carry out periodic reviews for possible conflicts.
If infringement is identified, enforcement commonly follows one of two routes:
- Administrative enforcement: often used first because it can avoid full court litigation, saving time and cost in suitable cases. If liability is established, fines and disgorgement of infringing profits may be among the outcomes.
- Judicial enforcement: court litigation with remedies such as damages and injunctions-closer to familiar Western civil litigation, but typically slower than administrative options, so it is often treated as a last resort when administrative channels are insufficient.
How Acadia can help
China remains a major market for brands, but trademark management requires attention to first-to-file risk, Chinese-language branding, and ongoing monitoring. Turning a blind eye can damage credibility. Contact Acadia Advisory to learn how we can help you manage this essential and complex process.
- China trademark search: we deliver an availability search for similar pending or registered prior trademarks.
- Trademark advisory: we work with your management to recommend classes of goods and services, and we support Chinese translation for your brand name and descriptions of goods and services.
- Trademark application: we prepare documents and filings for trademark registration in China.
- Trademark renewal and non-use cancellation strategy: where a registered mark has not been used for an extended period, third parties may seek cancellation. We help ensure renewals are handled on time and advise on risk reduction, including how non-use cancellation rules can affect portfolio strategy.
Discuss your trademark registration requirements
We map your scope, target city, timeline, and compliance dependencies into a clear implementation plan.