20 Tips for Obtaining a Trademark in China
As articulated in discussions on the same over at runrex.com, China has its own laws and rules relating to trademarks, which are different from those of the US. If you fail to note the differences then you may suffer losses and run into troubles. This article will look to articulate tips on how to obtain a trademark in China to help you familiarize yourself with the process.
Tips on eligibility for trademark registration in China
To be eligible for trademark registration in China, you must meet the following aspects:
The mark must be legal
The first thing you need to ensure is that your mark is legal before seeking trademark registration in China. This, as outlined over at guttulus.com, means that the mark cannot be identical or similar to the name or flag of a state or an international organization. The mark cannot discriminate against nationality or indulge in exaggerated or fraudulent advertising.
The mark must be distinctive
To be eligible for trademark registration in China, your mark should also be distinctive. This, as is covered in detail over at runrex.com, means that the mark must be easily distinguishable from the producer of other goods and services.
The mark can’t be functional
As covered over at guttulus.com, China doesn’t accept marks that refer to the nature or model of the good or service itself. For instance, a company selling oranges will not be able to register an orange or an image of an orange since generic names are free to be used by all. The mark, also, cannot sabotage competitors by referring to a technical effect, thereby confusing consumers when choosing a product or service selling the same technical effect.
The mark must be available for registration
Finally, the CTMO’s official trademark database is available online and can be used to search for existing trademarks. The database covers preliminary approvals, final approvals, renewals, and modifications of all trademarks and is available in Chinese and English. You should use this database to ensure that your mark is available for registration and isn’t already in existence.
Steps to register your trademark in China
Filing the application
Here, the company must either directly file an application with the China Trade Mark Office (CTMO) or file the application through the World Intellectual Property Organization (WIPO). If you choose the latter, then the trademark application must be based in the country where the mark is currently registered.
Choosing the product and service subclasses
As articulated over at runrex.com, while China accepts the International Classification of Goods and Services under the 1957 Nice Agreement, it further divides these classes into subclasses. This means that the applicant’s trademark must cover all the relevant products and services, in each of the subclasses, pertaining to the business’ scope when filing for registration.
Registering the trademark in Chinese characters
Foreign entities entering China should be aware that their trademark in Roman characters will not completely protect them against infringement. As per guttulus.com, the same or similar trademark can be registered in Chinese characters by another business, something you have to be beware of when registering a trademark in China.
Why should you submit a trademark application with the CTMO?
As discussed over at runrex.com, foreign applicants must submit their trademark applications with the CTMO through a registered agent, if they do not have a residency or place of business in China. This is preferable since it gives a business greater control over the registration process, particularly in the determination of which class and subclass to file under what types of products and services will be covered by the trademark. If you file for a trademark through the WIPO, it is the examiner who will decide the subclasses that are covered by the mark.
Choosing a Chinese trademark name
Literal translation
This strategy works if the mark has a distinctive meaning. For example, Apple Computers chose to trademark ‘Ping Guo’ which is Chinese for ‘apple’. Brands that choose this option will need to invest time and money in marketing and building the association between the Roman character trademark and the Chinese character trademark.
Phonetic translation
This strategy involves creating a Chinese character name that sounds like the original/Roman character trademark. For instance, McDonald’s is known as ‘Mai Dang Lao’ to Chinese consumers, Audi as “Ao Di’ among other examples. This strategy works if the brand has an established reputation among Chinese consumers. However, this can be tricky as the Chinese characters could mean something undesirable in one or more of the language’s 6 major dialects.
Combining a literal and phonetic translation
This strategy, where possible, could be the most effective one as per the experts over at guttulus.com. In this strategy, the trademark name is created by referring to the sound of the Roman character name and either a defining trait of the brand or a positive Chinese cultural reference. An example here is Coca Cola which goes by ‘Ke Kou Ke Le’, meaning ‘taste and be happy’.
These are the three strategies to consider when choosing a Chinese trademark name
How long does it take to register a trademark?
From discussions on the same over at runrex.com, the trademark registration process in China can take up to 15 months from the date of filing to preliminary approval and publication. However, this period doesn’t include the time involved in gathering the right documents and preparing for the application. If there is opposition to the trademark, then you can also expect additional delays.
Helpful tips for effective trademark protection in China
Always file trademark applications as early as you can
According to guttulus.com, China adopts the first-to-file policy to determine the ownership of a trademark, as opposed to the US where the policy is first-to-use. Given this policy, it is always recommended that you apply for trademarks as early as possible, filing early, and if possible, claiming the US priority within 6 months of the US filing.
Broaden the scope of protection when filing new applications
When designing the specification of goods and services for filing trademarks in China, US companies should also often consider broadening their scopes and not limiting their specifications to only the actual business they are engaged in presently or plan to enter in the future.
Design equivalent Chinese trademarks
As you can imagine, Chinese consumers are more comfortable with brand names in Chinese characters. This is why it is recommended that US companies design Chinese equivalents for their non-Chinese brands so that local Chinese consumers can recognize and remember their brands more easily.
Request a Chinese registration certificate for an internationally registered trademark
As already discussed earlier, a trademark can be registered in China through either direct national application or international registration. An international application comes with lower costs and more liberal specifications of goods or services as discussed over at runrex.com, hence why some may find it more desirable. However, when a mark is internationally registered in China, the Chinese Trademark Office (CTMO) usually issues a statement of protection in English, French, or occasionally Spanish. Therefore, if the owner wishes to enforce the mark after registration, then the owner needs to spend extra money and time requesting a Chinese registration certificate as the Chinese courts and other authorities concerned only accept documentation in Chinese.
Keep ownership of similar trademark on similar goods or services consistent
As covered over at guttulus.com, China considers similar or identical trademarks in respect of similar or identical goods as inseparable entities that should be owned by the same entity or co-owned by the same entities. This means that if an owner wishes to assign its trademark of this type to another entity, the owner should, therefore, assign either all of the trademarks or none.
Don’t use the registration symbol ® in China without China’s approval
Also, as articulated over at runrex.com, before a trademark is officially registered by the CTMO, then the owner or applicant must not attach the registration symbol ® to its trademark. If you do so, this will be considered false labeling and you might incur punishment under article 52 of the Chinese Trademark Law.
Keep evidence of a trademark’s use
Even though China doesn’t have use requirements after a trademark is put into use, the owner should try to keep evidence of use for three reasons, which are:
The evidence is crucial to keep a registered trademark in effect if another entity files of nonuse cancellation there years after registration.
If infringement arises and the owner of the registered trademark claims damages, the owner, per the defendant’s request, is supposed to prove its use of the trademark 3 years beforehand.
To prove well-known or influential status since trademarks well-known or influential in China can enjoy stronger protection at different degrees.
Register copyright of the originally created device earlier
As China is a member of the Berne Convention, then, in theory, copyrights protected in any member countries of the Berne Convention should enjoy protection in China, registered or not. Regardless, it is recommended that you still register the copyright in China so that you can get a copyright registration certificate which will come with lots of benefits.
These are some of the things to consider when looking to obtain a trademark in China, with more on this topic to be found over at the highly-rated runrex.com and guttulus.com.