China, home to one of the largest economies in the world, is often a business’s first target when looking to file international trademarks. However, the rigors of successfully filing and maintaining a trademark registration in such a competitive market are many. In order to protect your trademark in China, it is imperative that you understand the complexities of the Chinese trademark system, secure a registration, and then properly defend it against infringement. All three of these steps are aided by the expertise of intellectual property counsel, especially as an American business trying to decipher the subtleties of a foreign system.
Overview of the Chinese Trademark System
Before filing a trademark application in China, there are some key factors that you should know and consider:
China has a first to file system. Ideally, your application should be submitted before you initiate any business within Chinese borders, keeping your priority date as early as possible and allowing you the best chance of obtaining a registration. If you filed your US application first, you can use that filing date as your Chinese application’s priority date as long as it is filed within six months of the American application.
Be aware of China’s subclassification system. While China uses the standard 45 classifications that the USPTO does, they also further divide the goods and services covered in your application into subclasses to help further determine similarity to other marks. Your trademark attorney can help ensure that the necessary subclasses are covered within your application.
A registration for the Roman letters of your trademark does not necessarily mean it is protected in Chinese characters. Because of this, it may be in your business’s best interest to also file an application for the Chinese translation of your trademark, especially if you plan on expanding within their market and promoting your goods and services in Chinese.
How to File a Trademark in China
As an American business that is not domiciled within China, the Chinese Trademark Office, or CMTO, requires you to have a Chinese representative assist with the filing of your trademarks. Foreign applicants are able to use this agent to submit the application on their behalf; if you have an attorney that has assisted you with your US filings, they likely have a relationship with foreign counsel that can assist with your Chinese endeavors. Alternatively, a Chinese application can also be filed through the Madrid Protocol. This option may be especially appealing if you are also applying for trademarks in other countries. Filing through the Madrid Protocol does not take into account China’s subclassification system, so the scope of protection the trademark would provide could potentially be narrowed. Your IP counsel can assist in deciding which method is best for you and your business. For more information on the process for filing a trademark in China, check out our other blog post.
Once filed, the trademark process typically takes about six to twelve months, though this can be extended if a refusal is issued—and, for China, initial refusals are quite common due to their massive register. Your trademark attorney can help you determine the best way around the refusal and assist with responding. Once a registration has been issued, it is crucial that you continue to protect your trademark rights in China by making the appropriate maintenance filings; in China, renewals are due every ten years from the original registration date.
The Chinese trademark register is notorious for infringement matters due to its oversaturation. Despite this prevalence, you can best protect your trademark rights against infringement by establishing all of your goods and services are covered by your trademark registration and policing the marketplace for marks that conflict with yours. Should an infringement matter arise, it can be addressed through administrative action, civil litigation, or criminal prosecution—before you get to that level, however, you may also be able to file a non-use cancellation against the opposing mark.
These cancellations are a useful and commonly used tool when dealing with both refusals and infringement matters, as Chinese trademark law declares a trademark that has not been in continuous use for three years following its initial registration may have grounds for cancellation. While there are other reasons a trademark may be revoked, the non-use policy is an accessible and efficient method for removing an infringing mark. Trademark filings made in bad faith or marks that are just ‘squatting’ are highly unlikely to provide sufficient evidence of use in the marketplace, making them highly susceptible to these proceedings. Regardless, always consult with your US and Chinese counsel prior to making enforcement decisions for your trademarks.
Protect Your Chinese Trademark with Legal Counsel
Overall, seeking trademark protection in China is a worthwhile but intricate venture, and one best navigated by counsel that understands the details of the Chinese register and CMTO’s application process. In an application process that is characterized by refusals and cancellations, make sure that your business has all of the means necessary to receive that Chinese registration. At Gerben Intellectual Property, we understand that protecting your trademarks in China is a high priority, and we have the relationships with foreign counsel and experience with an array of enforcement matters to get your mark registered and defended in China. If you would like to learn more about protecting your Chinese trademarks, please reach out to one of our attorneys today.