It used to be rare for one of our clients to be unable to secure a desired trademark in China because someone had beaten them to it. With the proliferation of trademark filings in China over the last 3-5 years, those halcyon days are over.

When our pre-application screening turns up a conflict with a previously registered trademark, we often suggest that our client determine whether the preexisting trademark has been abandoned. Under Chinese trademark law, failing to use a China trademark in commerce at least once every three years puts the trademark at risk of cancellation. I use the words “at risk” because in China a trademark is presumptively valid throughout its term unless someone files a non-use cancellation against it (or otherwise challenges its validity). Of late, our China lawyers have been fielding a lot of inquiries regarding non-use cancellations.

Before we file a non-use cancellation, we gather up our own evidence regarding non-use, usually using Baidu for the initial search. If something shows up on Baidu indicating that the trademark has in fact been used recently, our work is done and securing a non-use cancellation will likely not be possible. If we do not find anything on Baidu, we generally expand our search until we either find evidence of trademark usage or become convinced that filing a non-use cancellation is the way to go.

Filing a non-use cancellation in China is fast and easy, but as with everything involving the Chinese Trademark Office these days, the rest of the process is often delayed. The good news is that with most of our non-use cancellations, the trademark owner never responds and, once the CTMO processes the filing, the “offending” trademark is cancelled, clearing the way for our client’s application.

Whenever clients ask about filing a trademark in China via the Madrid System, my answer is simple: filing a national application directly with the Chinese Trademark Office (CTMO) is better. Co-blogger Steve Dickinson takes an even stronger position. In his opinion, filing a China trademark via the Madrid System is a waste of time, and he categorically refuses to do it.

The Chinese trademark system is complicated: at once idiosyncratic and highly regimented, and overseen by capricious examiners. But the one-size-fits-all Madrid application elides all of this and makes registering a trademark in China seem easy. Really easy: all you have to do is check a box marked “China.” As a result, Madrid applicants are lulled into a sense of complacency, and all too often the result is a rejection that could have been avoided with a national application in China. Madrid applications are supposed to be cheap and quick, but fixing Madrid problems after the fact is neither. This problem is exacerbated by U.S. lawyers who are comfortable with filing in Madrid but have no experience filing in China.

Trademark prosecution in China is highly mechanical; for the vast majority of applications, you file an application, wait 18 months, and at the end of that time your trademark is either registered or rejected. (A slight oversimplification, but not by much.) There is no CTMO equivalent to a USPTO office action, no back-and-forth with trademark examiners, and no chance to amend an application that has been filed.

For this reason, the meaningful work for Chinese trademark applications occurs before the application is filed.

First of all, it is essential to conduct a pre-application trademark clearance (a.k.a. a trademark screening) to assess the trademark’s registrability. Is the mark inherently distinctive? Does it run afoul of China’s statutory prohibitions on trademarks? Does it conflict with any preexisting trademarks?

Next, assuming the screening results don’t scare you away, you must determine which class(es) to file in and the specific products or services (“items”) to be covered by the mark. This is a lot trickier than it sounds because the CTMO divides each Nice class into a unique system of subclasses. For purposes of trademark registration, each subclass is treated discretely: a trademark for one item in a given subclass covers all items in that subclass, but is not effective on items in any other subclass.

To see how this works, let’s look at Nice Class 41, for which the official heading is “Education; providing of training; entertainment; sporting and cultural activities.” The CTMO divides Class 41 into seven different subclasses:

Subclass 4101 – education

Subclass 4102 – organizing educational, cultural, and recreational activities

Subclass 4103 – library services

Subclass 4104 – publishing services

Subclass 4105 – sports and entertainment services

Subclass 4106 – animal training

Subclass 4107 – otherwise uncategorized services.

Because Class 41 has seven subclasses, that means that seven identical trademarks, each held by a different entity, could theoretically coexist in Class 41. To show how this can work, I did a search of the trademarks in Class 41 for “MGM” and found that four different entities have filed applications:

(1) Marilyn Licensing Corp. has registered “MGM” in subclass 4107;

(2) A Chinese company, Great Wall International Communication Co. Ltd, has registered “MGM” in subclasses 4102 and 4104;

(3) Metro-Goldwyn Mayer Lion Corp. has registered “MGM” in subclasses 4101 and 4105, and (needlessly) again in subclass 4105; and

(4) MGM Resorts International has attempted to register “MGM” in all seven subclasses, but will almost certainly be rejected in all but subclasses 4103 and 4106 because of the conflicting prior registrations.

When you file a China national application, you determine the subclasses that you want your application to cover. But when you file a Madrid application, your list of items goes straight to a CTMO trademark examiner, who will decide from your list which subclasses the items should go in without consulting you. This lack of consultation, combined with the examiners’ often-tenuous grasp of English (or French or Spanish), means that imprecise descriptions of items can lead to problems of both overinclusiveness and underinclusiveness.

The application filed by MGM Resorts International was overinclusive because it attempted to cover all of the services in the class when most of the subclasses were already taken. But it could have been worse: it could have been a Madrid application. Because MGM Resorts filed a national application, it will only be rejected with respect to services in subclass 4101, 4102, 4104, 4105, and 4107. If it had been a Madrid application with an overly broad description of services, the CTMO examiner could have decided that the services covered all subclasses, and then the entire application would have been rejected.

Surprisingly, attempting to cover all items in a class can also result in underinclusiveness. We see this most often with a description of items that mirrors the official Nice class headings – because the official Nice class heading usually only covers some of the subclasses for that class. For instance, the official Nice heading for Class 25 products is “clothing, hats, and shoes.” If you filed a Madrid application with that description of products, you might think that your trademark would cover all products in Class 25, but in fact your trademark would not have any protection for socks, scarves, gloves, or belts. According to the Chinese subclass system, none of those are considered “clothing.” This sort of mistake is quite commonly made by trademark lawyers not familiar with China’s trademark system.

Apple Computer famously ran afoul of the “underinclusive” problem when it registered a Class 9 trademark for “IPHONE” in 2002 as covering computer hardware and computer software. Unfortunately for Apple, cellphones were in a different subclass, and in 2004 a Chinese company, Hanwang Technology, registered “I-PHONE” to cover cellphones. Because iPhone was not a famous trademark in China in 2004, Apple had to pay off Hanwang to gain ownership of the trademark.

It is possible to perform a pre-application screening before filing a Madrid application, and it is possible to craft a description of items in a Madrid application that will conform to the Chinese subclass system. But this requires working with an experienced China trademark attorney or agent, and it will cost nearly as much and take nearly as much time as a national application. In other words, you lose all of the advantages of the Madrid System, but keep all of the disadvantages.

Finally, even if your Madrid System trademark is registered in China without a hitch, you may still have trouble enforcing your rights. Upon registration, the only formal certificate for Madrid System trademarks is the one issued by WIPO. China does not issue its own separate trademark certificate. In theory, this should not be a problem, because the WIPO certificate should be sufficient to enforce your trademark rights under Chinese law. In practice – and I realize this may come as a shock to some readers – Chinese bureaucrats and e-commerce customer service reps generally could care less about China’s WTO obligations. Much of the time, before they will lift a finger against an infringing factory or website, they will demand a copy of a CTMO-issued Chinese trademark certificate. It is easy enough to request a Chinese trademark certificate based on a WIPO registration, but it takes another three to five months to get one. That can feel like an eternity when your trademark is being knocked off.

If a client has an extremely precise and limited list of items and is already filing a Madrid application for a number of countries, then I might consider adding China to that list. But for the majority of clients, I agree with Steve. The CTMO is fickle enough with national applications. Why make things more difficult by filing a Madrid System application?

Sorry for the farm analogy, but I just finished looking at my itinerary for an upcoming Iowa trip.

Got a call the other day from a U.S. company furious about a competitor in China who had registered both its trademark and its patent in China.

How’s that you say?

Let me explain.

This U.S. company had just started doing business in China when one of its competitors (a European company, BTW, not a Chinese company) sent the U.S. company a cease and desist letter saying that the U.S. Company was infringing on both the European company’s trademark and patent in China.

This did not sit too well with the U.S. company because the patent on which it was allegedly infringing in China was the same as a patent the U.S. company had in the United States and the same held true of its trademark. I was in the midst of trying to resolve a client crisis when this company called and in no mood to discuss the finer points of China IP law with them so I suggested that they go back to their US patent and trademark attorneys (two different law firms I learned) and talk with them about next steps.

What did this U.S. company do wrong so as to allow itself to be in this horrible predicament and what can it do now to try to resolve it? I will answer the second question first because that is in many ways the less important one.

If it is going to have any chance of getting “its” trademark and “its” patent back in China, this U.S. company is going to need to pursue various actions in China to try to do so. On the trademark front, I am guessing (guessing because I do not have the facts to know for certain) that its best claims will be that the European company secured the trademark in bad faith (these are very tough claims) and/or that the European company must relinquish the trademark for non-use. On the patent front (and again I am guessing because the U.S. company was not clear on what sort of patent we were even talking about), its best claim will likely be that the European company’s patent should not have been granted because it lacked novelty.

The more important question is what should this U.S. company have done to have avoided the complicated and no doubt expensive situation in which it now finds itself? It should have filed for its own trademark and patent in China before its European competitor did.

We wrote about this many years ago in Getting A Patent In China. The China Patent Shuffle:


Kelly Spors, the Wall Street Journal’s spot on Q&A columnist on entrepreneurship and small business answered a question today on securing a China patent.

The question asked of Ms. Spors by a U.S. patent holder is whether it is “worth spending the money for a patent in China to prevent knockoffs from being made there?”

Ms. Spors says probably yes.

She starts out by noting that given “China’s reputation for meagerly enforcing intellectual property rights, getting a patent there may seem like a pointless expense. But you may kick yourself later on if you don’t.”

She then rightfully notes that in spite of the problems companies have in enforcing their patents in China, they are sometimes critical to prevent others from patenting YOUR product:

The big risk: If another company patents your idea first, it can turn around and sue you for infringement. It isn’t as much about “getting a patent in China as preventing other people from getting one,” says Siva Yam, president of the U.S.-China Chamber of Commerce, a Chicago-based organization that helps businesses navigate China. Mr. Yam says the Chinese government is trying to better enforce patents, so having a Chinese patent may be worth more in the future.

Mr. Yam recalls a few years back when a Pennsylvania company decided not to seek a patent in China since it was already selling the technology there. But a Chinese company later sought and received a patent on a similar technology and then sued the U.S. company, along with writing letters to its customers threatening to sue if they continued doing business with the firm. The Chinese company eventually backed down, but not before the U.S. company had spent ample time and money fending off the claims.

She says it also makes sense to get a Chinese patent if you are selling your product into the Chinese market and that a “patent will allow you to fight back if the manufacturer starts selling knockoffs of your product.” She then notes that if you are going to seek a China patent of that which you have already patented in the United States, you must do so within a year of filing your U.S. patent application, unless you get an extension by filing an international patent application.

She is absolutely right about this. The China lawyers at my firm have received countless phone calls from companies agonizing over whether or not to get a China patent until we end that particular agony by telling them that they are too late.

I am probably a bit less upbeat than Ms. Spoor on the benefits of securing a China patent because they do tend to be difficult to enforce in China. One of the Chinese lawyers with whom we regularly work is even of the view that getting a strong trademark and constantly updating your product militate against the need to get a patent most of the time. But this ignores the problem of someone else stepping in and registering “your” patent in China.

Though we are constantly seeing instances where Chinese companies swoop in and register someone’s US trademark in China, it is less common with patents and I think this is because it is generally considerably more complicated and expensive to register a patent than it is to register a trademark.

Bottom Line: f you are doing business in China or even just considering doing so, you should be looking now at what you can do to protect your IP (patents, trademarks, copyrights, trade secrets, etc.) in China.

As China lawyers, we are all too frequently contacted by our clients who need help dealing with IP infringement in China.  As a first step, we analyze the situation and propose a course of action.  The following is an amalgamation of memoranda, done so as to convey both what goes on out there and how to deal with it.  Most importantly, however, it is intended to provide a path towards preventing IP infringement through proactive trademark and copyright registrations.

In reading the memo, please note that Company A is our client and the company to whom the memo is written.


This memo outlines next steps for dealing with the ongoing infringement of Company A’s intellectual property in China.

As you are already aware, Website1 and Website2 currently have multiple listings for unauthorized “Brand Name A” products: Website1 has listings for “The Brand Name A” ______ and “The Brand Name A” ______; Website2 has listings for “The Brand Name A” ______ and “The Brand Name A” _______. I am certain that we could find numerous other instances of infringement on other websites if we looked, but these are two of China’s biggest online marketplaces. For instance, we just ran a search on another leading e-commerce site, ______, and found a listing for “The Brand Name A _______.” This _______ is identified as having been published by “________ Publishing,” which we do not recall being one of your OEM suppliers.

To generalize, you are facing — and will continue to face — two main kinds of infringement: (1) the unauthorized manufacture and sale of products that you already produce (e.g., The Brand Name A _______) and (2) the unauthorized manufacture and sale of products that you do not already produce (e.g., The Brand Name A _________ and The Brand Name A _________).

Generally speaking, the most efficient way to enforce IP rights in China is with a registered trademark. China has no common-law trademark rights, which means that unlike in the United States, Company A does not have rights to the “Brand Name A” trademark with respect to every conceivable product in China. Indeed, the only way for Company A to obtain trademark rights in China on a particular product is for Company A to register a trademark covering such product. Right now, your trademarks in China only cover certain products in Class ____ (specifically, _________) and in Class ____ (specifically, __________________, sold as a unit). Nearly every other product — whether one you actually make (like ________ or _________) or one you do not make (like _________ or ____________) — is not covered by your existing trademarks.

Our recommendations follow:

I.  File IP Complaints with Website1 and Website2.

The fastest and easiest way to have infringing links removed from a Chinese e-commerce site is to submit a request to that site. Website1 is part of the ________ group of companies, and so you should be able to use your existing _______ account to file an IPR complaint. With respect to Website2, considering the past difficulties in communication that we have had with the company that runs that site, we recommend that we contact the supervisor at Website2 (with whom we have dealt in the past) who handles IP complaints, and submit a complaint directly to him, rather than having you submit such a complaint through their online form.

The above method should work fine with The Brand Name A ________ product, assuming the postings are not for the resale of legitimately purchased goods. However, it is possible that the above method will not work (and in fact it should not work) with the ___________product on Website1 or the ___________product on Website2, because your China trademarks do not extend to such products. We should nonetheless proceed as if the trademarks do extend to such products. We note that this method worked with Website2 before, largely because Website2 has shown itself to be relatively unsophisticated in terms of its understanding of trademark law.

II. Register Additional Trademarks with the Chinese Trademark Office

Even if Websites 1 and 2 both agree to take down all of the objectionable links, relying on Company A’s two existing China trademarks is not a viable long-term solution. We strongly suggest that you file additional trademarks to cover (1) all of the goods that you already sell, (2) any goods that you might sell in the future, and (3) any goods that you want to prevent anyone else from selling as a “Brand Name A” product.

This last category is the trickiest, for two reasons. First, how do you decide which goods to protect? You probably do not need to worry about “Brand Name A” carburetors or pianos. On the other hand, you probably should worry about “Brand Name A” candles and picture frames. (Some large companies with nearly unlimited budgets, like _________, simply file trademarks to cover virtually all possible goods.) Second, China has a use requirement for all registered trademarks: if you do not use a registered trademark in commerce at least once every three years, it will be at risk of cancellation. That said, China does not have an affirmative requirement to prove use; a trademark is presumptively valid unless a third party challenges it for non-use. This means that if you file a trademark solely to prevent a third party from using that trademark, it will be valid until a third party challenges it, but will be valid for at least three years.

We propose that we work together to come up with a list of classes and goods that will achieve the broadest trademark protection for Company A’s intellectual property. We suggest that you file any such additional trademarks for (1) the phrase “_____________” (2) “The Brand Name A” logo, and (3) any other logos or phrases that you would like protected.

It generally takes around 16 months to register a trademark in China, and you have no rights in a trademark until registration, so we advise moving quickly.

III. Register Copyrights with the China Copyright Protection Center

China’s copyright law is formally quite similar to that of the United States: a valid Chinese copyright exists at the moment a creative work is put into tangible form in any other country that is a signatory to the Berne Convention. However, as a practical matter Chinese agencies and courts do not take action on an unregistered copyright.

Registering your copyrights will allow you to take action against counterfeit Brand Name A products, whether or not the postings (or products) are identified as such. Armed with such copyright registrations, you could take action against (for instance) a bootleg _______ with another title on the cover, a _______ that is simply called a “_________” _______, and a ______ that contains the exact same content but with a different title.

We strongly suggest that you register copyrights for all copyrighted material created or controlled by Company A: your _______s, ________s, and _________s, and also any _________ that have a tangible form, whether as ________s, ________s, or otherwise.

It generally takes around three months to register a copyright in China. You have no enforceable rights in a copyright until registration, so we would advise moving quickly on this as well.

IV. Register Trademarks and Copyrights with China Customs

Registering your trademarks and copyrights in China establishes your rights in such intellectual property. Enforcing your rights requires additional steps. As noted above, to remove infringing postings it is virtually always necessary to contact the e-commerce site. And to stop infringing products from being exported from China requires, at minimum, that you separately register your trademarks and copyrights with China Customs.

Note, however, that China Customs only inspects large shipments. They will not inspect small shipments for infringement, primarily because they cannot determine whether such shipments represent counterfeit goods or legitimately resold goods.

Registration with China Customs is only possible after issuance of formal trademark and copyright certificates.  For this reason as well, we advise moving quickly with trademark and copyright applications.

V. Attempt to Identify Infringing Parties

Though fighting IP infringement in China can be like playing a game of whack-a-mole, sometimes it is possible to discover the identity of infringing parties. In many cases the infringing manufacturer has a connection to a manufacturer you are using to produce your goods. Sometimes they are one and the same. Needless to say, knowing the identity of the infringing party informs the potential actions that we can or will want to take.

We would be happy to discuss the possibilities for investigating the identity of infringing parties. At the very least, we should collate and analyze the information available online. To the extent such infringement becomes systematic and/or endemic, we should discuss further steps such as hiring third-party investigators in China.

VI. File a Complaint with AIC and/or File a Lawsuit

Once we have solidified Company A’s IP portfolio by registering the appropriate trademarks and copyrights and identifying serial infringing parties, we can consider taking formal action beyond requesting e-commerce sites to remove infringing postings. There are two main options for formal action:

(1) File a complaint with the Administration of Industry and Commerce (AIC), the national-level agency that handles IP disputes and enforces IP rights.

(2) File a lawsuit with a Chinese court that has jurisdiction over the defendant.

These approaches both have good and bad points. Filing a complaint with the AIC is usually cheaper and more likely to result in a quick injunction and/or a seizure of the infringing goods. However, the AIC does not have the power to award monetary damages for infringement or to require indemnification; for that, you would need to file a lawsuit.

Note that for both of the above approaches for dealing with China IP infringement, the identity and location of the infringing party makes a big difference. If the infringing party is a large state-owned enterprise, or is the major employer in a smaller city, the chances of either the AIC or the local courts taking meaningful action go down

We are not at this stage yet, so it would be premature to outline a formal strategy for pursuing infringers. But generally speaking, we would work with our partner law firms in China to formulate the best strategy for you.


“The Brand Name A” has become a famous brand in America and beyond, and because of that you will inevitably be facing increasing intellectual property infringement in China. To fight against this we recommend that we move forward with (1) filing IP complaints with Websites 1 and 2; (2) registering additional trademarks in China; (3) registering copyrights in China; and (4) registering your existing trademarks with China Customs.

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.

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?

We here at China Law Blog constantly emphasize the need to secure trademark registrations in China, as evidenced by the China trademark posts below:

But it just occurred to me this morning (upon seeing an email from one of our China attorneys to a client) that we have never written anything about what a company should do with its China trademark once secured.  So here goes, in the form of the fairly standard email we write to our clients once we have received notification from the China trademark office that the trademark application we filed for our client has been accepted and that the trademark has now been registered in China.

I am pleased to report that the following China trademarks have been registered for Class 25 goods (i.e., clothing):

(1)    [Brand name]
(2)    [Brand name] logo

Attached please find a scan of the Certificate of Trademark Registration (along with an English translation) for each of the above-referenced trademarks. Please also note the following:

1.    If ______[client] LLC (i) changes its name or address; (ii) licenses any third party to use either trademark; or (iii) assigns either trademark, it must file an application with China’s Trademark Office to that effect.

2.    Each trademark will be valid for a period of 10 years, starting on the official registration date of June 21, 2013, and ending on June 20, 2023. If you wish to renew the trademarks, you may do so any time within six months before the expiration date.

3.    Each trademark will be presumptively valid throughout its term, but if a trademark is not used in commerce in China at least once every three years with respect to the covered goods, then it is at risk of cancellation for non-use.

We are still waiting to receive the original trademark certificates. Upon receipt, we will send them to you.

As I noted in my previous email, we should discuss some other ways to protect your intellectual property in China. Registering your trademarks is the first and most important step, but there are two additional steps that we recommend to our clients, especially those who manufacture goods at risk of counterfeiting, like branded clothing. First, monitor China for possible infringement of your marks (including but not limited to monitoring third party applications for similar trademarks). Second, register your trademark with Chinese Customs. The latter is an essential step if you believe counterfeit product may be coming from China, because Chinese Customs will not seize any allegedly counterfeit products unless you have a registered trademark in China AND you have separately registered that trademark with Chinese Customs.

Late last week, we did a post, Register Your China Trademark Or Go Home, screaming about the importance of foreign companies that do business in or with China (including those foreign companies that do nothing more than have their products made in China) registering their trademarks in China.  That post was in response to “East Asia Company” who had left a comment saying that many companies simply cannot afford to register their trademarks in China.

That same reader, in response to yesterday’s post, backed down a little bit and seemed to recognize the importance of trademarks for those doing business in China, but then argued that most companies are not Pfizer and simply cannot afford the $28,000 required to secure trademark protection.


Here is East Asia Company’s comment to yesterday’s post:

Thanks for replying to my post. I know that trademark squatting is a problem but I was not aware that orders were held at ransom with any regularity. I know it does happen sometimes (seldom I thought). That was interesting to read and makes me think a little more about the advice I give people, which is simply do it if you can, but if you can’t then don’t lose sleep over it. I guess now the advice I would give people is ” if you can do it, great. If you can’t, just buy some Unisom and try to get a good night’s sleep.” 🙂

But however you look at it, protecting IP in China is not cheap. And you yourself said as much in a UK Telegraph article last year in which you were quoted as saying “Each trademark filing costs around £460,” said Mr Harris. “So if you are Pfizer you register your name across all 40 categories. Then you have to register Viagra across all 40, and then your logo across them all and it begins to add up.” That is $700.00 per category and a whopping total of $28,000. Well if you are not Pfizer, for whom $28,000 is crumbs, and are just ABC company in Podunk USA, how can you afford this? Mind you this is only trademarks and not patents or copyrights for written material, (children’s books for example, a current project I have). I’m sorry but I just think this is expensive. And that is doing work on the front end only. What happens when a company in China infringes on your IP? What about those costs? As you say they “add up.”

If I heeded the advice in the last paragraph of your post today, I would have to go back to some of my clients and tell them, “My apologies, bud, but you just don’t have the money to start a business. I think you should close up your online store immediately and go back to your old job whatever that was.” In fact many of these people are extremely driven, they have a good product, good sales and loyal customers; in short they have a perfectly legitimate business. They are just small and simply lack the resources to do all the things that they should do in an ideal China sourcing world. I’m sorry but I just have a hard time telling people who are achieving success to quit just because they don’t have enough money. That is like telling the kid who is 5’4″ that he/she can’t play basketball even though he/she has just drilled seven straight 3 pointers. The better advice IMHO is to encourage them, at the same time you make them aware of the difficulty, and provide them with the knowledge that will allow them to win in China. Because the fact is that small companies who do not protect their IP when they go into China can sometimes be more “successful” than large companies who do.

Right, and sometimes those who smoke live longer than those who don’t. And who is telling the 5’4″ kid that he or she can’t play basketball?  I’d be telling the kid, hey kid, I realize you are only 5’4″ so here is what you are going to have to do.  We are not going to make you into a great rebounder, but we are going to work on your ball handling and shooting skills and …. For future reference, don’t anyone ever try to out-analogize me when it comes to basketball.  Just talk to anyone in my office.  I make my living analogizing pretty much everything to basketball.

More fundamentally, like so many, East Asia Company does not seem to understand the distinction between what are commonly called “offensive trademarks” and what are commonly called “defensive trademarks” and the massive cost difference between achieving good protection from the one as opposed to the other.

Let me explain by noting off the bat (I’m good with baseball analogies too), probably 98 percent of my law firm’s clients that are just sourcing product from China need only one trademark.

Pfizer does a whole lot more than just source product from China. Pfizer sells its products in China both directly and through others. So Pfizer must make sure that nobody else will be able to sell non-Pfizer products in China that consumers (or anyone else) will mistake for a Pfizer product.  Let’s take Viagra (made by Pfizer) as an example.  What do we commonly identify with Viagra?  Many things. Its name. Its color.  Its shape. The company that makes it.  The way the Pfizer name looks (it has a rather distinctive “f”).  The VGR that seems to always be stamped on the pill itself.  I am sure there are more identifiers, but in just looking at images of the pills, these are what come to my mind. So what should Pfizer you do in terms of its trademark registration in China? It probably should, at minimum, apply with China’s trademark office to register the following:

  • The name “Pfizer”
  • The name “Viagra”
  • The color blue
  • VGR
  • The diamond shape
  • The distinctive “f”

But wait, there’s more.  Since Pfizer is selling Viagra in China (not just manufacturing it there), it should also apply to register a Chinese character name for both Pfizer and for Viagra.  On top of that, since Viagra is commonly known as “Wei Ge” (meaning, “great brother”) in China, it should also register that name as well.

I could go on and on. But I have only gotten started because I have not even addressed the classes and subclasses within China’s trademark system in which Pfizer should seek to file the above. If Pfizer misfiles its trademark application and, let’s say, files for the above names/logos in the class for “clothing,” rather than in the class for pharmaceuticals, anyone would be free to sell pharmaceuticals using those names and logos.  So obviously Pfizer should file its trademarks/tradenames in the class for pharmaceuticals.  But does Pfizer want someone to start a chain of medical clinics in China called “Viagra Medical Clinic”?  Probably not. How can Pfizer stop that? By securing the Viagra name in the medical services class.  In fact, Pfizer probably does not want people making t-shirts with the name Viagra and the blue pills on them either, so it probably should register its trademarks/trade-names under the clothing class as well.  Very expensive.  Complicated too.

But let’s pretend for just a minute that we are dealing with a small company called Seattle Fish that has its one product manufactured in China.  This one product is a  fish net called “The Iron Trap.”  Seattle Fish’s yearly sales have been pretty steady over the last few years and they are as follows:

  1. $2 million to the United States.
  2. $1 million to Canada
  3. $500,000 to the United Kingdom
  4. $300,000 to Japan
  5. $200,000 to Korea
  6. $25,000 to France
  7. $20,000 to Spain
  8. $7,000 to India
  9. $7,000 to Saudi Arabia
  10. $6,000 to Burkina Fasu
  11. $5,000 to Myanmar
  12. $5,000 to Poland
  13. $2,000 to Egypt
  14. $1,000 to Brazil
  15. $1,000 to Mexico
  16. $1,000 to Afghanistan

Seattle Fish expects its future sales will roughly track the above, but with one exception: it plans to enter into a distribution agreement with a Mexican company to sell its product throughout Mexico.

Seattle Fish puts its “Seattle Fish” name on its product, along with its “Iron Trap” brand name. Seattle Fish has a rather non-distinctive logo of a fish on its product.

What should Seattle Fish do?  Here would be our advice:

1.  China Trademarks.  Register the name “Iron Trap” in China, for “defensive” purposes.  Do this to prevent anyone else from registering that name and blocking Seattle Fish product from leaving China. We would advocate for registering that name in only one class because registration in only one class is almost always enoough to ensure product can leave China without being stopped for trademark infringement.

Do not bother trying to register the name Seattle Fish because China does not allow registering place names.  We would confirm with Seattle Fish that it would be no big deal if it had to change its fish logo and we would then probably tell them it is up to them to decide whether to seek to register that logo as a China trademark.

So that’s it.  Probably just one China trademark.  And if Seattle Fish were not using “Iron Trap” on its product or its packaging, it would not even need to register that. We have a client that has around fifty pieces of massive equipment made in China a year.  Rather than bothering to register a trademark in China, this company has the equipment shipped to the United States where it pays someone at the port a few bucks to bolt on the company’s identifying information.  It does this because its trade-name has already been taken in China. Because it never uses its trade-name in China at all, it faces no risk of having its machines seized at the China border for having violated someone else’s trademark.

2.  United States, Canada, England, Japan, Korea Trademarks.  Because Seattle Fish has substantial sales to these five countries, we would strongly recommend that it register its trademarks in each of these five countries.

3. France, Spain, and Poland.  We would inform Seattle Fish of the cost to register its trademarks in each of these three countries and we would also look into whether it might not be cheaper for it to register its trademarks with the European Union (this is called a Community Trademark or CTM), covering all three of these countries and the United Kingdom as well.

4.  Mexico.  We would advocate that Seattle Fish register its trademarks in Mexico and then license their use to its distributor there.

5. The other countries.  We would suggest Seattle Fish not bother registering its trademarks in these other countries, but we would suggest that once it has secured its China trademark that it register that trademark with China’s customs authorities. The reason for doing this is that China customs will then forbid any product from leaving China that infringes on Seattle Fish’s trademarks.  This is a relatively cheap way of securing trademark protection (to a certain extent anyway) for the entire world. For more on how to determine where to register your trademarks, check out Trademark Protection In The Global (And China) Marketplace.  For more on using customs to protect your IP, check out Using Customs To Protect Your Brand From China Counterfeits.

Now let’s pretend for a minute that Seattle Fish is just starting out.  It has never sold a product anywhere, but it has this one great product with a great name: Iron Trap.  It is planning to start out selling its product only in the United States, but it might have random sales to other countries through its website.

In this case, we would suggest that it register its Iron Trap name in China right away and consider registering its other trademarks in the United States either right away or when its sales numbers justify it. That’s it.One China trademark.

So what is a sourcing company that handles product sourcing for small companies to do?  We suggest they have a provision in their contract with those companies that makes clear that it the product company (not the sourcing company) is responsible for figuring out what to do about its own trademarks and other intellectual property.

That contract should also recommend that the product company secure its own lawyer to figure out its own trademark and other IP issues.  Sourcing companies that don’t have such contracts are at risk of getting sued if their product company has its trademark “taken” anywhere in the world.  Small product companies that hire sourcing companies far too often see their sourcing company as their “China expert” tasked with handling anything that has to do with China.   So when a China trademark problem happens, the product company’s first response is going to be to go after the sourcing company.  Trust me when I tell you that I am saying all this based on real world experience.

Sorry for going on for so long about this, but this is game on the line type stuff and so it is critical that we make the fundamentals clear.

Register Your China Trademark!

Who’s with me?

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.

As we have written a number of times, every company sourcing goods from China should register a trademark in China for any logo or brand name appearing on its goods or packaging. China is a first-to-file country, and companies that do not register their own trademarks are just laying out the welcome mat for trademark squatters. For more on the need to register your trademarks in China, check out the following:

But it’s also important to be realistic.

Companies should only register marks that they are certain (or fairly certain) that they will use, and for products that they are certain (or fairly certain) that they will be sourcing. Registering trademarks in China is not cheap. And even though China will grant trademark protection to a brand that has never been used in commerce by the applicant, failure to use a trademark in commerce for three uninterrupted years puts that trademark at risk of cancellation for non-use.

The safest and most comprehensive trademark strategy in China is to register a separate trademark for every logo and brand name that you intend to use in China. If you register a trademark that solely consists of a visual device (e.g., the Nike “Swoosh”), then you can use that device in any size, in any color, and in any layout. Similarly, if you register a trademark that solely consists of a phrase (e.g., “Nike”), then you can use those words in any size, in any font, in any color, and in any layout. If you register both a visual device and a phrase (e.g., separate trademarks for the Nike “Swoosh” and the word “Nike”) then you can use them singly in any combination, size, arrangement, or alignment. As a general rule, registering both is what we recommend to our clients who employ both words and visual devices as part of their branding.

But for some clients, another method may be more cost-effective. If you have a logo that combines a visual device AND words, you can register that logo only and you will gain exactly the same protection as if you had filed separate trademarks for the visual device and each phrase. Take the logo for motion picture studio Paramount Pictures: a graphic of a mountain, with the words “Paramount” above and the phrase “A Viacom Company” below (and, for the rest of 2012, the phrase “100 years” in the middle). If Paramount were to register this logo in China as a trademark – and solely this logo – they would gain protection for the graphic of the mountain, the word “Paramount,” and the phrase “A Viacom Company.”

However, to maintain protection for all of the elements in a logo, you must use the exact logo as registered at least once every three years or else your trademark for that logo will be at risk of cancellation. And if the underlying trademark is cancelled, the protection for the individual logos and words will go away too. Note that exact means exact: same font, same size, same alignment, same everything. To return to the example of the Paramount logo, because the current logo will not be used after 2012, it would be foolish to trademark only the current logo without also trademarking the words “Paramount” and “Viacom.” (I couldn’t resist checking, and all three have in fact been trademarked in China.)

Another risk in solely registering a logo (as opposed to separately registering the words and the visual device) is that the words in the logo will only be protected to the extent that the Chinese trademark examiner who handles your application can read the words and is diligent about accurately recording them on the registration certificate. Given the volume of China trademarks being processed, and the lack of English fluency on the part of the examiners, this is a legitimate concern. And this applies to all trademarks filed in China: a quick check of Paramount Pictures’ trademarks in China revealed that for one trademark, the word on their logo had been registered as “Parmount,” and for another trademark, the phrase “Star Trek” had been registered as “Startrek.”  Not sure if these misspellings were due to a filing error on the part of Paramount’s trademark agent or an examiner’s error, but either way, this sort of thing happens way too often with China trademarks.  Have you checked your China trademark lately?

In happier news (at least, for fans of Maverick and Ron Burgundy), last month Paramount applied for U.S. trademarks for both “I Feel the Need The Need for Speed” and “I’m Kind of a Big Deal,” as slogans to be emblazoned on t-shirts. En garde, Zazzle!