We here at China Law Blog constantly emphasize the need to secure trademark registrations in China, as evidenced by the China trademark posts below:
- China: Do Just One Thing. Trademarks.
- WHEN To Register Your China Trademark.
- China Trademarks — Do You Feel Lucky? Do You?
- Register Your China Trademark Or Go Home
- Register Your China Trademark Or Go Home, Part II.
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.