How To File A Proper Trademark Registration In China?
(Author: Simon Fang, Nancy Tang; Source: Grandall Law Firm)
Many applicants make lots of mistakes when registering trademarks in China. Here we give a short summary to reinforce the intricacies of the processor companies and individuals who apply for trademark registration.
First, the application for trademark registration should be filed as early as possible. The China Trademark Office (CTO) will then examine and announce which trademark had undergone registration first. Registered trademarks have to follow the first-to-file principle no matter who was the first user of it in practice according to the Trademark Law of the People’s Republic of China. It requires that all the enterprise operators shall strictly abide by the principle and register their trademark before the goods are put into the market in China. Otherwise, the trademark may be registered by other companies when the goods enter into the market, which would place the first user company in danger of infringement risk. Many applicants have received a very harsh lesson concerning this matter. I have a Finnish client named K. Hartwall, engaged in outsourcing in China. Their Chinese factory produced products with the label “K. Hartwall” and then exported these products to Europe. In the early stages, K. Hartwall didn’t consider trademark registration in China because they had no intent to sell on the Chinese market. Later I found that an individual had filed the trademark registration “K. Hartwall” on the same category of products as those of the CTO, and the trademark registration was still in the three month opposition period. I reported my findings to K. Hartwall and explained to them that if the CTO approved this application, China Customs would stop K. Hartwall’s productions export. Then the Finnish company K. Hartwall realized the severity of the situation. Fortunately, we finally found that the applicant of the trademark was a relative of the supplier manager for K. Hartwall in China. After this discovery, we discussed the situation with the supplier manager, and he persuaded his relative, the applicant, to relinquish the rights of the trademark “K. Hartwall” under the pressure of their business relationship. Finally the applicant transferred the trademark back to K. Hartwall for RMB2,000 only. We successfully restrained a malicious trademark registration.
According to the Trademark Law of the People’s Republic of China, any enterprise or individual can file applications for trademark registration. The CTO does not perform a substantive examination of the capability of the applicants. This is the reason why so many trademarks are registered by enterprises or individuals with no prior use and malicious intent. The applicant of the trademark registration could be a foreign enterprise or individual and it doesn’t need to obtain any branch or office qualification.
Secondly, the applicant shall file for registration on multi-classes. This principle is especially applicable for some well-known trademarks. According to international treaties and China’s trademark laws and regulations, the goods of the trademark registration are divided into 45 classifications. When choosing the classifications, the applicant is advised to perform various selection based on the applied products, industries and possible future infringement risks (some famous companies can apply for trademark registration for all of the goods’ classifications). The fee for trademark registration is not expensive. If any company maliciously registers one trademark successfully, the loss due to market confusion or litigation costs could be very high. For example, a company that produces beer should register the trademark “Yanjing Beer” not only under class 32 (beer), but also class 33 (white wine) to prevent the market confusion that could arise out of the use of “Yanjing Liquor”. Another example is where an e-commerce company engaged in online sales of wine, after considering the area of the goods packing and logistics, decided that the final trademark classification should include at least:
——Class 16 (package; printing);
——Class 21(Liqueur sets);
——Class 32 (Beer);
——Class 33 (Wine);
——Class 35 (Business management and organization consultancy);
——Class 38 (Transmission of messages and images (Computer aided –); Mail (Electronic –); Electronic bulletin board services [telecommunications services]);
——Class 39 (Transport; Storage);
——Class 40 (Food drink processing; Pattern printing);
——Class 41 (Publication of electronic books and journals online; Digital imaging services);
——Class 42 (Creating and maintaining websites for others; Computer software design);
——Class 43 (Restaurants; Accommodation bureaus).
Finally, the applicant should register its trademark in different forms. Some enterprises like to register their trademark in the form of “logo + Chinese company name + English name” as an associated trademark. Actually, this is not always right. If you need to use the company name separately on occasion, you should register separately the Chinese company name, English company name and logo. The scope of the protection will be broader in practice. For instance, if a company’s logo is , this logo needs to be submitted to the CTO, but also the word mark “MTS” as a trademark to the CTO at the same time in order to prevent a similar trademark from being used or registered by others , such as or .
Due to the wide use of the product model and product series name in the agreements and binding documents, applicants should register the product line and product model as the trademark in addition to the company’s name and logo, such as the series “CRITERION”, product model “SCII600”, to avoid others “reaping without sowing”.
Trademark registration seems very simple; however, how to register trademarks in an efficient and effective way is actually a complicated matter and needs professional advice. In order to develop a sound strategy for trademark registration, professional services are always advised. Unimaginable losses could occur if an applicant lacks a proper trademark strategy in the competitive Chinese market economy.