China Trademark Enforcement Principles
The main way to protect a China trademark is by perfecting and maximizing one’s rights in the mark, which usually occurs by registering it with the U.S. Patent and Trademark Office, and then by enforcing those rights against competitors, imitators, and would-be users to keep them as far away as possible from the property.
Enforcement, in turn, usually boils down to sending cease-and-desist letters to the wrongdoers in the hopes of obtaining voluntary compliance with your demands, under threat of suit; and if the wrongdoer doesn’t voluntarily comply, to carrying out the threat and commencing suit. In this respect, protection of one’s intellectual property rights is both binary and simple: either the wrongdoer voluntarily stops its bad behavior in response to your pressure, or it doesn’t; and, if needed, you either escalate the dispute to court, or you don’t. There aren’t any other legal options.
Generally valid for China, with a few minor changes. First, and most obvious is that you need to register your mark with the China Trademark Office, not the USPTO. Second, you need to analyze whether to register your mark in just English, just Chinese, or both. Third, though the bit about having to choose between pursuing and not pursuing escalation is true, China has other dispute resolution options in addition to a straight-up lawsuit.
Basic Principles of China Trademark Law
Trademark law is a creation of both state and federal law (and both statutory and common law). At the bottom, trademark rights arise through use, which means adding the mark to a good or product packaging (for goods) or by presenting the mark on websites or signs (for services) and selling the item to consumers. Registration is available through state governments and the U.S. Registration is not required, but it expands the geographically limited rights that automatically arise through use. There is a lot to say about trademark registration, but further discussion is outside the scope of this discussion.
Protecting a brand commonly starts with choosing a brand. Protection has two facets, which you can think of in terms of both sides of a coin. You probably want to register your mark (or at least have that option), and you want to be able to enforce it in court. But you also want to choose a brand that won’t get you sued by another trademark owner. In other words, there are “offensive” considerations and “defensive” considerations.
Basic Documents required for Trademark Registration in China
The basic documents for trademark registration required are:
- The basic registration/identity information of the applicant.
- A sample of the mark for application.
- The goods or services that are designated for application.
- These documents are necessarily required for Trademark Registration in China.
Process of Trademark Registration
The general process of trademark registration is as follows:
- A preliminary Trademark Search is conducted before applying for Trademark Registration in China.
- Submission of the application for registration.
- Preliminary examination and preliminary approval or rejection.
- Trademark publication by gazette for the opposition.
- Grant of registration by the Trademark Office.
How Goods and Services are described for Trademark Registration in China?
Goods and Services are classified according to the Classification of Similar Goods and Services issued by the TMO, which is edited based on Nice Classification.
- There are 45 Classes of Trademark Classification.
- Classes 1 to 34 includes Goods.
- Classes 35 to 45 include Services.
Also Read: Classes of Trademark
Timeframes For China Trademark Registration
- The Trademark Office usually completes the examination of a trademark application within nine months of the date of filing.
- The Trademark Office publishes the same if the application complies with the relevant legal provisions.
- If no objection is raised against the published application within three months of the publication date, the trademark will be registered.
- A certificate of registration will issue and the registration will publish.
Validity Period for Trademark
- The registered trademarks are valid for 10 years.
- The validity period commences from the date of registration.
- A trademark registrant may proceed by going through the formalities for Trademark Renewal within 12 months before the expiry of the validity period.
- A registrant that fails to do so may be granted a six-month grace period.
- The validity period for each renewal is 10 years.
- The period commences from the day following the expiration of the previous period of validity.
Refusal/Opposition of Registration
The Trademark Registration can face refusal/opposition on the following grounds:
- The opposed mark is identical or similar to the opponent’s trademark which is already registered with regards to the same or similar goods or services.
- If the opposed mark is identical or similar to the opponent’s trademark who has applied for the trademark earlier with regards to the same or similar goods or services.
- The opposed mark is an imitation, reproduction, or translation of the opponent’s well-known trademark.
If the application files by fraud or other improper means.
Conclusion
The procedure to register for a trademark takes around 16-24 months, be assure to begin the process well in advance. If you’re not a resident in China or have a foreign company, you’re obliged to work with a local trademark agent who will help you to register the trademark.
If you are also keen to register your trademark and give your business a competitive edge, give us a call at +91 8750008585 and our trademark experts will guide you. For more information, please visit our website TrademarkCart.
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