Trademark Registration for China
by pepesale gmbh
Registering your trademark in China might not be a very current topic. But new businesses are being incorporated, new products developed and new services emerge over time. They all have in common that they need a name, brand, logo that better is protected as a trademark in the markets you are doing your business - and sometimes even beyond.
Therefore, in my view taking care of your trademark is a recurring topic that should not been forgotten, even if the „Zeitgeist“ has other more pressing developments in mind. Especially with regard to trademark registrations for China this is in my view as actual and pressing as always.
Basically, registering your trademark for China is not a “rocket science”, especially as China is a member of the so-called Madrid System - an international system, that allows a relatively easy registration and management of your trademarks in all its member states. This means that as long as the Madrid System for the international registration of trademarks applies in your case, you actually do not necessarily need a trademark lawyer in China to have your trademarks registered in Mainland China, this can be done from your place of business.
However, there are several reasons why I would recommend to consider to locally register your trademarks in China:
- Do not forget that also for the registration of a trademark in Mainland China a thorough pre-registration trademark research is highly advised. Although the official trademark registration at the Trademark office of the China National Intellectual Property Administration is still including a similarity check. However, in order to avoid surprises and to better evaluate future risks with your own trademark in Mainland China you should have your trademark researched for similar trademarks in the specific classes through the local official trademark research engine.
- In the event of an objection, or a third-party opposition against your trademark application, immediate action is required in order to not have your application denied. Such actions can only be filed in China - the Madrid System itself does not offer a procedure for third party oppositions or objections of the Chinese Trademark Office. In fact, it is much more time-consuming and complicated to react in these matters in time when a trademark application was filed through the Madrid System than when the filing was done nationally in China.
- Last but not least: Do not forget about your Chinese trademark, meaning “your” trademark in Chinese characters, or alternatively the transcription of your trademark in Pinyin. Such registration of your Chinese trademark can basically only be done locally in China as foreign businesses usually lack the basic trademark required for filing under the Madrid System.
If you think you do not need your company name, logo, product etc. to be protected in a Chinese wording, then be aware, that your Chinese competitor might take care of that!
Finding a Chinese name, respectively a Chinese brand for your trademark is of course a “science for itself” that goes far beyond the subject of this legal tip.
But so much in short: When doing business in China do not forget that from a Chinese perspective your trademark will be given a Chinese name IN CHINESE CHARACTERS - if you want this or not. This for the very simple reason that Chinese people speak in Chinese language and write in Chinese characters. As simple as this sounds when it comes to foreign trademarks that is quite often forgotten by the trademark owner.
And if a Company, respectively a brand actively decides to not have its trademark registered in Chinese characters, or as a transcription in Pinyin, then be it. What counts is, that you had made your mind up, and based on your decision follow your own IP-strategy for China.
Therefore, my legal tip: Although the issue about trademark registration in China is no real news - still - do not forget to register your trademarks in China, especially as nowadays the Chinese market seems to be more competitive than ever. When registering your trademark for China I would recommend to do this locally through Chinese trademark lawyers or trademark agents. In my view the advantages of a local trademark registration prevails the admittedly convenient Madrid System.
Through a local trademark registration, you usually receive more insights about already registered similar trademarks as well as the special features of the Chinese trademark registration system for your specific trademark. In the event your trademark is opposed during the registration process, or else there occurs a problem, this must be handled on site in China anyway.
Together with our experienced, since longtime cooperating trademark lawyers and trademark agents we can assist you with your trademarks on the ground in China. I can also advise you in Chinese trademarks and your overall trademark and intellectual property rights (“IPR”) protection strategy for China.
This brings me to other quite effective options to protect your IPR within China such as design patents and copyright registrations (and of course invention and utility patents). These and other topics regarding specific IPR enforcement measures in China I will cover in other legal tips.
Take care of yourself!
Yours
Dr. Martin Seybold
German Attorney-at-law
Disclaimer: This legal tip is provided to the best of my attorney’s knowledge. However, it does not claim to be exhaustive. In order to be better understandable and manageable for the interested reader without any legal background, the legal topic discussed hereunder cannot be presented in a legally comprehensive and exhaustive manner. This legal tip is intended to provide general guidance and cannot replace individualized legal advice based on the specific circumstances of a particular case.
