In the era of knowledge-based economy, intellectual property rights including trademark are significant to corporate brand building, market expansion and effectiveness enhancement.
Protecting a company’s trademark is a strategic move in the long term and should be carefully considered. Acadia strongly recommends you to register your trademark in China when start to do any business activities.
Acadia Corporate Services Consultants can support you at each step of the registration process.
Schedule a Consultation to discuss our China trademark registration services.
Trademark Registration in China
Arriving in China and finding carbon copies of your products for sale under your brand may not be the welcome you were hoping for, but it’s more common than you think. Fortunately, China’s Intellectual Property law has come a long way and continues to develop to provide effective legal protections to combat brand infringement. However, such protections are not automatically granted. A company must undergo appropriate channels in order to have their IP rights recognized and enforced. Given the prevalence of counterfeiting and piracy in the country, it is crucial for brands to register their IP rights in China, irrespective of whether or not they intend to conduct any business there.
China’s trademark law operates on a first-to-file principle, meaning that the first one to file for trademark registration is afforded the exclusive rights to it. This has led to many brands rushing to register their trademarks in the Chinese market to avoid being a victim of “trademark squatting”. This is a common practice in which persons actively attempt to register trademarks of existing brands for financial gain. This has resulted in many companies having to pay an exorbitant amount to trademark squatters in order to purchase their own trademark.
However, China enacted a new Trademark Law in November 2019 which prevents registration of trademark in the absence of an intention to use such a mark. This aims to directly tackle the issue of trademark squatting, allowing provisions to legally regain the ownership of a trademark.
Although this is a testament to China’s ongoing improvements of its Intellectual Property laws, it is still recommended to register trademarks at the earliest convenience as trademark squatting has not been fully eliminated. Going through the legal procedures to fight against a trademark squatter can be a lengthy and a challenging process, hence a company should register a trademark at earliest possibility to avoid dealing with such a burden.
What is a trademark?
The global definition of trademark is relatively broad:
A sign identifying a specific or primary use of a certain service or goods, enabling prospective customers to distinguish between goods and services of another company. The mark may be composed of words, letters, numerals, devices, colour combinations, three dimensional letters or a combination of all of these elements.
The China Trademark Office establishes the following requirements for trademark registration in China:
- The mark must be available: it cannot clash with any prior right, which includes other intellectual property that may not be formally registered but is well-known. It is recommended that you perform a comprehensive search through the official trademark database to check for all prior registered trademarks.
- The mark must be distinctive: it should be distinguishable from the producer of other goods and services.
- The mark cannot be functional: it cannot be registered if the nature of the good and service exists to achieve a technical effect.
- The mark must be legal: it must not be discriminatory or be similar to the name or a flag of an international organisation.
Where can I register
Please note that a trademark is only valid within the legal jurisdiction that it is made. A trademark registered in mainland China will only cover mainland China. A company would need to register separately for additional trademark protection in HK, Taiwan, and Macau.
Register in both English and Chinese
Many Chinese find it difficult to recognize and pronounce non-Chinese writing and consequently, will develop their own Chinese language version of a trademark which may or may not be closely related to the company’s international trademark. This can be demonstrated by the US retailer, Best Buy, which withdrew from the Chinese market in 2011 due its lack of success. One contributing factor for its failure might be attributable its Chinese brand name, Baisimai, which translates into “thinking 100 times before buying”. Managing trademarks in China requires a sophisticated understanding of Chinese culture and the kind of language that is appealing to Chinese consumers. Getting it right is an important component of any brand’s success.
Acadia can help your company avoid unflattering translations of foreign trademarks that may harm their success. Acadia’s team of Chinese-speaking consultants who can help you develop a Chinese language trademark by utilizing a range of recognized methods, including transliteration, phonetics, and conceptualisation.
China Trademark Protection & Enforcement
Registering a trademark in China does not necessarily preclude others from using your brand. It is important to remain alert for any infringement. Acadia can help you regularly carry out comprehensive inspections for possible infringements.
Upon identifying a brand infringement, you may seek enforcement of your trademarks through two possible routes:
Administrative: This is suggested as the first step as it does not require the parties to go to court, thus saving time and money. If the infringer is held to be liable, they will be required to pay a fine, along with any profits they earned from infringing the brand.
Judicial: this route is similar to the western system whereby the parties will litigate in court with the remedies being damages and injunctions. This is a comparatively lengthier process than the administrative route, thus is suggested as a last resort.
China presents a market too lucrative for brands to ignore, however, it is important to manage your trademark in China. This includes avoiding trademark squatting, making sure your trademark is correctly adapted for use in a Chinese language market, and remaining vigilante for illegal trademark violations. Turning a blind eye to such activities can damage your brand’s credibility, which is something that should be avoided at all costs. Contact Acadia Advisory today to see learn more about 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 communicate with your management to recommend the categories of goods and services your trademark should be registered under, we provide Chinese translation for your brand name and goods and services
- Trademark Application, we prepare all documents and applications for your trademark registration in China
- Trademark Renewal and Cancellation, when a registered trademark hasn’t been used in 3 years, anyone can file for its cancellation for free. This increases the possibility of your trademark registration and prevents rivals. Our team also ensures that your trademark registration is properly renewed and handles the process on your behalf