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China Trademarks. Don’t Sweat The Delay.

Posted in Basics of China Business Law, Legal News

Today was a good day for our clients for whom we sought to register a China trademark.  For today, we received no fewer than five notices from the Chinese Trademark Office granting preliminary approval to the various marks we sought to register for them in China.

It is very common is for us to receive a whole slew of updates from the China Trademark Office a few days after a big holiday.  What is also common is for us to always be a little bit surprised by the whole slew of China Trademark Office updates because it has been so long since we actually filed the trademark applications for which the preliminary trademark approvals are coming in.

You see, the time from filing for a trademark in China and actually securing that trademark typically takes 15-18 months. Under China’s new trademark laws, it is expected this time will be shortened, at least for some trademarks.

When we do receive notice of preliminary approval of a China trademark, we send an email to our client along the lines of the following:

 I hope this email finds you well. I am writing today with some good news (finally) regarding your Chinese trademarks. The Chinese Trademark Office has granted preliminary approval to the following marks:

  • [Company Name] in Classes ___ and ___.
  • [Brand Name] in Classes ___  and ___.
  • [Brand Name] in Classes ___ and ___.
  • [Logo] in Classes ___ and ___.

All of the above marks have been published in the Chinese Trademark Gazette. For your reference, I have attached the pages of the Gazette on which your marks appear, as well as a translation of the relevant information therein.

The process from here is as follows:

1. The Trademark Office will wait 3 months to see if any third parties file an opposition to your marks.

2. If no such oppositions are filed, your marks will be approved for registration. The Trademark Office will then send us the official trademark registration certificates, which we will forward to you.

Once your trademark is approved, you might want to consider some additional ways to protect your intellectual property in China. Registering your trademarks is the first and most important step, but we usually recommend two additional steps to our clients, especially those who manufacture goods at risk of counterfeiting. First, monitor China for possible infringement of your marks (including but not limited to monitoring applications for similar trademarks). Second, register your trademark with Chinese Customs. The latter is an essential step if you have reason to believe there will be counterfeit product coming from China, because Chinese Customs will not seize any allegedly counterfeit products unless you have a registered trademark in China AND you have also separately registered that trademark with Chinese Customs.

Though the above two additional steps offer additional protection, they also involve additional costs. We would be happy to have a further discussion to determine which (if any) of the above makes sense for your business.

Finally, following please find a summary of the status of all your China trademark applications:

*    *    *    *

Best,

Harris & Moure

Fifteen to eighteen months.  Wow. Just about whenever I say that to a client who has contacted us for a China trademark, they immediately ask what they are supposed to do in the meantime.  I tell them that they should move forward with their Chinese trademark application, even though it will take quite some time until they actually secure the Chinese trademark. It still makes sense to move forward with registering a China trademark because the first to actually file for a particular China trademark is virtually certain to be the one to get it.

Yes, until you actually get your China trademark, you will not be able to stop anyone from using that trademark, but the mere fact that you have filed for it is usually enough to stop legitimate companies from using it.

I then usually talk about a client that makes a product that sells for two to five million dollars.  There are probably less than 300 manufacturers of this product in the world.  This client was concerned about someone using their trademark during the pendency of their China trademark filing.  I assured them that nobody would likely do so, by pointing out that there are no”fly by night” companies in their industry because of the massive capital required.  I then talk about how unlikely it would be for any of their competitors to put my client’s pending China trademark on their products, knowing that in about a year and a half they would be unable to use that trademark because it would be held by my client. Why should a legitimate company spend anything marketing a brand name it knows will in relatively short order belong to one of its competitors? Of course, this analysis does not work so well if you make something small and cheap that can be relatively easily copied by an illegitimate company.

But generally, the best way to approach China trademarks is with patience.

What do you think?

  • China Newz

    Remember when I was in China, I saw the Playboy bunny logo all over the place. It was on clothing and being sold on other novelty items as well. Wonder if the Playboy corporation knows about this and wonder how many other logos are also being used in China without permission of a corporation. Must be scores.

  • http://www.yormicklaw.com/ Jon Yormick

    Good advice, as usual. In addition to registering Chinese trademarks with Chinese Customs, assuming there are parallel U.S. trademark registrations and there is concern about counterfeits (a rarity when it is not, as pointed out), it is also a good idea to record the U.S. trademarks with U.S. CBP. Then educate and work with CBP to seize counterfeits as they hit U.S. ports.