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Timing Your China Trademark. Not Too Soon And Not Too Late.

Posted in Legal News

Earlier this week, I corresponded with a client who is seeking to ship a new food product into China.  The client wanted to know if it should register a China trademark for the brand name and the logo even though there is a good chance that China will not allow that product into China for some time, if ever.

The client did not want to spend money for trademarks from which it might never benefit (if its product were never allowed into China), yet at the same time, it did not want someone to beat it in registering its product brand name and product logo as China trademarks and thus preclude it from using its “own” brand name and logo in China.  My advice was essentially as follows:

You definitely will want to register your brand name in China before you let anyone know that you will be using that brand name in China.  And you definitely will want to register your brand name as a China trademark before you contract with anyone in China to have them distribute your product.  Beyond that though, I think you should just weigh the cost of the trademarking (the brand and the logo) against the odds of someone going off and registering those before there is any indication that you will be using those in China.  And since your product name is pretty unusual and also regional within the United States, the odds are pretty good that nobody will register it in China if you are able to keep it a secret that you are going to China.

Then yesterday, I received an email from an inventor who is so convinced that his invention will be a success that he wanted us to trademark the name of it in China right now, even though he does not anticipate the product itself going to China for another five to six years.  I wrote him back to tell him that registering a China trademark now without using it during the next three years is generally not a good idea.  The reason this is not a good idea is because China’s trademark law provides that if a registered trademark has not been used for three consecutive years, it may be cancelled for non-use.

The key to registering your trademark in China? Registering it not too late and not too soon.

  • FOARP

    Yeah, the non-use cancellation rule is a doozy. To avoid cancellation you need to be able to show use in the classes for which the trademark was registered, and the use must be use as a badge of origin – simply mentioning the trademark in advertising, or on a non-functioning website, is unlikely to be enough.