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China Trademarks. Doing Them With Class.

Posted in Basics of China Business Law, Legal News

As we have written many times over the years, if you are selling goods into China, sourcing goods from China, or even just doing business in China or with China, you probably should be registering a trademark in China for your logos and brand names. China is a first-to-file country and it requires no evidence of prior use, which means that whomever files for “your” trademark first, almost certainly gets it. For more on the need to register your trademarks in China, check out the following:

But for what exactly should you register your trademark n China?

China breaks out its trademark registrations into 45 different classes, not to mention sub-classes.  And unlike many other countries, China is a “single class application” country, which means that you must file (and pay for) a separate trademark application for each class for which you are seeking trademark protection.  Very roughly speaking, what this means is that if you register your “ABC Trademark” in the class for clothing, you will be protected from trademark infringement just from those who use your ABC Trademark on clothing items.  If someone wants to use your ABC trademark on clocks, cars, kitchen appliances, or any other product or service within any of the other 44 classes, they will be free to do so.

So then what can you do?  Well obviously you can register your “ABC Trademark” in all 45 classes, but that is really no solution at all. It is no solution both because doing that would be prohibitively expensive for all but the largest and wealthiest companies.  It is also no solution because if you fail to use your registered trademark for three years, you risk losing it.

So then what should you do when filing for China trademarks?  We suggest that you register your mark in classes of products you may make or sell in the future, or where there is room for consumer confusion.  Let’s take your ABC Trademark on clothing.  It probably does not make sense for you to register that for kitchen appliances but it might make sense for you to register it for beauty products because so many clothing companies also make beauty products.

Unfortunately, there are no general rules here, beyond that you fully familiarize yourself with China’s various trademark classes and that you figure out as early as possible what classes your products/services best fit into now or may fit into in the future and also what registrations by others are most likely to be confused for yours.

UPDATE:  I just received an email from a Hong Kong lawyer friend that raises a very good point.  This lawyer, who has a very substantial China IP practice, thinks every company should think long and hard about registering their trademark in the clothing class:

It was interesting to read the last portion about registering CN TMs.  I’ve been advising people for years that irregardless of what their product category is, they should also register their TM for clothing on the basis that almost any TM in China will eventually appear on someone’s (unauthorized) T-shirt, socks, or something in one way or another.

Furthermore, most companies will at some point or another want to put their trademark on a piece of clothing, whether it be a T-shirt for a promotional item, or for a marketing blitz somewhere, or whatever.  Or, the company will eventually want to expand their brand by moving into clothing…Look at what happened to Ferrari when they started selling clothing in China – or Harley Davidson.
Very good point.