Registering a trademark in China is critical for any company which has plans to operate in China or is already functional there. they need to know the importance of registering a Chinese trademark and the process for doing the same. The article provides insight into why it is important to obtain a Chinese trademark and how to go about securing it.
Why Register Trademark in China
Registering a Chinese trademark is essential for any company which wants to do long-term and profitable business in China. It provides them protection against trademark infringement and counterfeiting which is common in China. The companies need a registered trademark in China for licensing and selling their products in the country. Therefore, registering a trademark in China offers plenty of benefits to the companies. Some of the most important reasons for registering a Chinese trademark are discussed below:
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Here is what a China Trademark looks like:
Protection Against Infringement and Illegal Use
The single most important purpose of registering a Chinese trademark is to prevent counterfeiting of the brand and products. If there is no registered trademark in China, then anyone can replicate the product and sell it as a fake. This erodes the brand credibility and causes considerable loss to the businesses. By registering a Chinese trademark, the brand instills confidence among the customers that they are purchasing only the original and best quality product. There are also instances where the brand has a trademark registered overseas and not in China and they are their trademarks are registered in China by trademark squatters. They can threaten such brands for seizure of their products based on trademark infringement. Not registering a trademark in China exposes brands to significant risks of brand erosion and loss of business which is why registering a Chinese trademark is a must for them.
Make Use of E-commerce
If any company wants to sell their products on e-commerce, it needs to register the trademark in China as most e-commerce players will ask for the same. With a rapidly expanding online marketplace, selling products on Chinese e-commerce platforms can enhance the visibility of the brand and add considerably to the profit. In addition to this, a trademark registration is also required to ensure that companies can remove listings from the Chinese e-commerce websites when the product is being sold with another brand name. if the company has a registered trademark in China, the e-commerce websites can quickly take down such malicious listings which will protect the brand and reduce monetary loss to the business.
Licensing Products to Distributors
Under the Chinese law, any company which plans to sell the product in China under the existing brand name needs to own the trademark to the product. If the company does not own the brand name in China then it cannot sell those products in the country. Since the products need to be licensed to a distributor for selling, the company cannot license something which it does not own according to the law. Any reputed distributor will insist on registering the trademark in China. In some cases, dubious distributors may even register the trademark on behalf of the company without telling them, which can create more issues. It is, therefore, best for the companies to register their trademark in China and then license the products to the distributors for selling.
China is the largest global market. most companies and brands have it on their priority to tap the immense and robust Chinese market. Securing a Chinese trademark is essential for any company looking to sell their products in China for the long-term. Any company which is selling branded products in China without a registered trademark may face precarious situations. There are high chances that someone else will secure a trademark to their brand and then sue the original brand only for trademark infringement. Hence, it is highly recommended for any brand to register the trademark in China and also register the Chinese language equivalent of the trademark.
Legal Action Against Counterfeiters
One obvious advantage of registering a Chinese trademark is it allows the applicant to take legal action against anyone who does counterfeiting of the original products of the company. If a company does not have a registered Chinese trademark, then it can do nothing about counterfeiters. It cannot take them to the court of law as they themselves lack any ownership rights over the trademark. It will only encourage such counterfeiters and cause further damage to the brand and profitability of the company. Thus, it is in the best interest of the companies to register for and secure a Chinese trademark for guarding against counterfeiting of their products in the country.
Process for Registering Trademark in China
The process of application for registering trademark in China and getting the same approved is a lengthy. It is better if the applicants start planning for the same and apply for trademark at the earliest. The application can be made either through the CTMO or the WIPO. As China practices the first-to-file policy, it means the applicant who files the trademark registration application first is preferred and awarded the trademark. Such applicants will also get the rights to distribute and sell the product in the country for which the trademark application was made. The detailed process for applying for registering trademark in China is provided below:
Select the Right System to File
Trademark applications can be filed by two systems in China. It can either be filed directly at the China Trade Mark Office (CTMO) or by filing an application via the World Intellectual Property Organization (WIPO). The applicants should select the right channel for filing of trademark in China to get the process successfully completed at the earliest. Foreign companies and applicants without any residency or place of business in China, need to apply for their trademark applications through a registered agent in China.
The process of direct application with CTMO has greater benefits compared to filing with the WIPO. Application through CTMO provides more flexibility and control to the applicant as they can decide for which classes are to be filed and what type of products and services are to be covered by the trademark. This is a significant advantage for the applicants as some of the categories under the International Classification under Nice Agreement have been further broken down into subcategories. While filing for trademark under the WIPO route, the applicant does not decide which subclasses to apply for, instead it will be decided by the examiner and which subclasses will be covered is based on their discretion.
Check the Availability of Trademark
The applicants are recommended to do a thorough pre-filing search for checking the availability of the trademark. The pre-filing search is done by China Trademark Registration Office and is generally completed in 1 day. There are agencies which can do the pre-filing search for applicants free of charge. Trademarks are approved and issued on a first come, first serve basis in China. This means that if an application for trademark registration has been made by someone who cannot prove their ownership over the trademark. If a trademark has been registered prior by someone then it will not be awarded to any later applicant. If the registration for a specific trademark has been filed on the same day by two different applicants, then the application received first will be given preference for registration. Pre-filing search will save considerable efforts and resources later.
Choose the Correct Product and Service Sub-Classes
Like most countries, China follows the International Classification under Nice Agreement. However, it is important to note that these classes are further segregated into smaller subclasses in China. The applicants should carefully study and understand the subclasses they want covered under their trademark registration application. General footwear and boots will fall into different subclasses in China and the same trademark may have been registered by different companies in each of these subclasses. Applicants should ensure that the trademark covers all the products and services in each of the subclasses which is relevant to them.
Chinese Translation of Trademark
Registration of a trademark in Roman characters does not protect it from being registered again or infringement of similar trademark in Chinese characters. Hence, it is recommended to register a Chinese version of the trademark to remove any ambiguity and prevent unscrupulous elements from taking advantage of the situation and using the registered trademark.
Registration of trademarks in Chinese character is difficult though. This is mostly due to the fact that translation or transliteration into Chinese does not make sense always. Ralph Lauren did not create a Chinese trademark when doing business in the country. Chinese name of its business was created in the country known as “San Jio Ma” which meant “three-legged horse”. Choosing a Chinese trademark is further important as the meaning, pronunciation, or even the look of the Chinese characters can have an impact on the business.
Submission of Relevant Documents
The company filing the application for registering a Chinese trademark needs to prepare and submit the documents required by the relevant authorities. In China, the State Administration for Industry and Commerce (SAIC) is responsible for managing all the trademark registration process and applications. There are prescribed documents and forms which the company has to abide by while submission of their application for trademark registration. It is important to verify the documents for any error or incompleteness before submission. The documents should also be verified for adhering to the correct format as prescribed by the authorities.
Verification and Approval by SAIC
Once the application is submitted, SAIC verifies each of the submitted documents. Based on its verification, SAIC will recommend if the application can be processed further or more documents or information is needed by them for moving ahead on the trademark registration process. Once SAIC has completed the document verification and is satisfied with the same, it starts the process of registering the trademark. The process is lengthy and takes time. The applicant can expect this process to take approximately 1 year.
Approval and Issue of Trademark
Once the process of registering the trademark in accordance to the application is completed, SAIC goes ahead with approval and issue of trademark to the applicant. The process of approval and issue of trademark takes another 2 months from the time of completion of registration of trademark.
Receipt of Certificate of Approval
After approval and issue of trademark, SAIC sends the certificate of approval to the applicants. The applicant can expect another 2 months to receive the certificate of approval from the date of approval and issue of trademark to them.
What Can Trademarks Include
The registered trademarks in China can consist of words, designs, letters, numbers, 3D symbols, combination of colors etc. However, it is best to avoid name of cities and Chinese dignitaries whether of the past or the present.
Trademark Registration Cost
The trademark registration cost has been reduced by 50% in China recently effective from April 1st, 2017. The details of the new rates for trademark registration in China are provided below:
|1||Applying for mark per class|
|2||Designating each additional item of goods/services in excess of the basic ten per class|
|3||Applying for re-issuance of a registration certificate|
|4||Applying for assignment/transfer of a trademark registration/application|
|5||Applying for renewal of a registration per class|
|6||Late filing of renewal documents per class during grace period|
|7||Appeal procedures before the Trademark Review & Adjudication Board (TRAB)|
|8||Recording change of name or address or agent of owner for mark per class|
|9||Obtaining a certified document|
|10||Applying for collective or certification mark per class|
|11||Filing an opposition per mark per class|
|12||Cancellation procedures per mark per class|
|13||Applying for records of a license|
Validity of the Trademark
The Chinese trademark registration is valid for 10 years. The applicants need to apply for renewal of the trademark at least 6-months before its expiry. The trademark will be renewed again for a period of 10 years. It is important to note that if the products are not used for commercial purpose within 3 years after getting the trademark, the company may stand the risk of losing the registered trademark.
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