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China Trademark Basics

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A few months ago, I was email interviewed for a story on protecting intellectual property in China. I just learned today that the story is not going to run because it was “deemed too technical.”  Fine.

So instead I will list out below the points I made to my interviewer, who had sought me out to discuss what “foreign companies need to know about China trademarks …. the China trademark basics, if you will.”  I told her the following:

1.  Companies need to know that China is a “first to file” country.  This is by far the most important thing to know about China trademarks. What this means is that (with very few exceptions) whoever files for a particular trademark in a particular category gets it. So if your company’s name is ABC and you make shoes and you have been manufacturing your shoes in China for the last five years and someone registers the ABC trademark in China for shoes, that other company gets the trademark. And what this means is that other company can stop your shoes from leaving China because your shoes violate its trademark.

2.  Companies need to realize that a trademark in the PRC is not a trademark in Hong Kong or Taiwan or Macao.  Oh, and just for safe measure (yes I have been asked this), it also is not a trademark for Singapore or Korea or Japan or for anywhere else outside the Mainland.  The real key here is that if it makes sense for you to have your product trademarked in the PRC and in Hong Kong and in Taiwan (or anywhere else), it is usually a good idea to register your trademark in all countries at least somewhat simultaneously. This is because trademark hijackers review the trademark publications and may quickly file “your” trademark for themselves in some other jurisdiction before you are able to do so.

3.  Companies also need to consider exactly what it is that they want to trademark.  Do you register just your English-language name?  Or do you create a Chinese name and register that as well?  Should your Chinese name be a translation of your English name, a transliteration, or something unrelated?  Determining these things oftentimes requires both a China trademark lawyer and a China marketer.  In Hermès’ China Trademark Case. Do You Know What Trademarks You Really Need? I talked about how my firm’s clients typically handle these issues:

In situations where our clients are making product in China for export only and their product has the trademark on it only in English, securing just an English language trademark is usually enough. In situations where a company intends to manufacture its product in China and eventually sell in China, the company must weigh the costs and benefits of securing a Mandarin (or other language) trademark now, or just wait. In situations where the company knows it will be selling its product in China right away, it needs to analyze the options set forth … above. I would say that in almost all instances where our client’s trademark has actual meaning … they have chosen to trademark both the English and the Mandarin of the word. Rarely do our clients seek a China trademark in a language other than either English or Mandarin. Only around 25% of the time do our clients seek to secure the trademark for a transliterated or phonetic version of their English language trademark. Most of the time, they choose to wait and see how their product does in China and then, if it proves successful, they usually come back and register more on it. Waiting also allows them to see exactly what the Chinese will call their product. The downside to waiting is that someone else may register the name in the meantime.

4.  Companies need to take a long term approach to their China trademark filings.  Sure you are only making shoes now, but what about your plans to eventually expand to wallets.  Should you register your trademark in the trademark class/category that encompasses wallets?  Do you care if someone makes shoe polish with your name on it?
Who needs the MSM anyway?