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Trademarks in China: What do I need to file for my application?

Trademarks in ChinaWhat do I need to file for my application

The notion that being there first somehow justifies ownership rights is a venerable and persistent one.” –Lawrence C. Becker, Property Rights: Philosophical Foundations (1977).

Generally there are six requirements that the client must provide to the firm:

  1. Logo
  2. English text of the trademark
  3. Chinese text (characters) of the trademark
  4. Copy of the passport, if applicant is individual or copy of certification of incorporation
  5. Name and address of the applicant
  6. The items the trademark applies to

Logo

The first step is avoiding the mistake of submitting your logo in color. Although you may have a graphic with a very distinct hue, you must send the firm a digital copy in black and white only. If you submit an application in a certain color, your right is limited to that single color. Although others cannot register your image in another color, there is no express bar on the use of a different color. In other words, if you apply for red you can’t stop others from using pink or fuchsia, etc.

Trademarks in China: English text

Essentially there are three ways different methods of “Romanizing” your trademark’s text. Most importantly you will need to register the plain English label. However, if you are marketing a Chinese product that does not have a direct English translation, you should to register its pinyin transliteration. In case you are not familiar, Pinyin is the official Chinese system using the Latin alphabet for denoting the sounds of words. Basically it entails transcribing the pronunciation into phonics into a format so that 广州市becomes “Guangzhou.” The last and least important method concerns the Wade-Giles system. Pinyin has effectively superseded Wade-Giles. It is important to make mention of it because you will see various products today still using the Wade-Giles system (e.g., T’sing Tao).

Trademarks in China: Chinese text (characters)

If you continue selling your product in China (sooner or later) you should register your trademark in Chinese as well. Chinese consumers will remember the products in Chinese characters. Too many times have I purchased the wrong flavor of noodles, mistaking Spicy Beef for Seaweed. As a result, I always go with chicken because it is the only character I can remember—point well illustrated I hope. (For another example, consider the dilemma Hermes faced when the company did not register its transliteration in Chinese)

Although there are myriad dialects of Chinese, the most standard pronunciation is Mandarin. Mandarin uses the pronunciation in Bei Jing as standard. But technically all written Chinese characters are nearly the same. I say nearly because in some dialects there are minor special characters to be aware of, such as in Cantonese. The bottom line is that you should register the Mandarin characters.

Copy of passport or certification of incorporation

A simple copy or certification of incorporation will be acceptable. However, if the applicant is individual, a signed power-of-attorney will be needed.

Name and address of the applicant

No special considerations need mentioning for this step.

The items the trademark applies to

Remember, trademarks are words and symbols representing the source of a product or service. This means that in addition to whatever physical products you may wish to sell, you can also have images and symbols representing the business and services you offer.

For the purpose of trademark applications, Nice Classifications (which take their name from the Diplomatic Conference of 1957 in Nice, France), prepared by the World Intellectual Property Organization (WIPO), provide the acceptable formats for descriptions. For more information, please click here. This is the U.N.’s equivalent to the U.S. Patent and Trademark Office’s listing of Acceptable Identification of Goods and Services, (located here)

Please note that certain Nice Classifications are subdivided into additional categories. Applications in different classifications will be treated as separate transactions for billing purposes. However, for those remaining under one classification, the Trademark Office in Beijing will include up to ten categories. An extra fee will be charged for any more.

Trademarks in China: Ensuring longevity in the PRC

Trademarks in China Ensuring longevity in the PRC

After a year and half, our client’s trademark was finally granted by the Trademark Office in Beijing.

The client asked me: “Do you have any guidance on requirements for usage and requirements for ongoing maintenance?”

Good question. It occurred to me that this is something important for people to know about, after they tried so hard and obtained the trademark certificate.

Generally, owners of the trademark are entitled to use it in his or her products, packaging and/or marketing materials. They are also entitled to use it in an AD, exhibition or other commercial activities.

Trademarks in China: Trademark law of the PRC

  1. The term for a trademark is ten years commencing from the day the trademark is granted. If the owner wants to renew it, they must file his/her application of renewal within twelve month before expiration. He/she will have a six months grace period after the expiration date. However, after the grace period, he/she will lose the trademark forever if no application for renewal is filed.
  2. All trademark owners are supposed to file for registration with the Trademark Office in the event that: they plan to change their trademark, they plan to change their name or address or they plan to assign his or her trademark to anyone else. Besides, if the owner doesn’t use his/her trademark for three years consecutively, his/her trademark will face the risk of being revoked by Trademark Office.

It’s not easy for a trademark to be granted in China, given the huge amount of trademark applications the bureau sees each day. To clients this seems to be a never-ending wait. So I want to advise you all to please pay attention to the ongoing maintenance of this precious certificate!

3 protections registering trademarks in China will grant you!

3 protections registering trademarks in China will grant you

We all know we must register our trademark in China to get any legal protection. But what specific protection can be expected? According to the revised Trademark Law, there are three kinds in total:

1. Trademark. It’s not allowed to use the same or similar sign with a registered trademark in the same or similar products. By use, we mean manufacture as well as sell.

2. Trade name or company name. The revised Trademark Law also makes it clear that the Anti-Unfair Competition law will be applied if any company uses a registered trademark, or a well-known unregistered trademark as its trade name and causes public confusion. It means using other’s trademarks in company name may be restrained.

3. Domain name. Using the same or similar registered trademark to be the domain name and go in for e-commerce of related goods is also forbidden.

In conclusion, if you go about registering trademarks in China, you cannot only stop others to use the same or similar sign in their products, but also stop others to use the same or similar words in their company name or domain name.

PRC Releases New Trademark Amendment, Violators Face Fines: ~500K USD

PRC Releases New Trademark Amendment Violators Face Fines -500K USD

China’s top legislature– Standing Committee of the National People’s Congress (NPC) adopted an amendment to the Trademark Law which went into effect on 30th of August, 2013.

The amendment, raises the compensation ceiling for trademark infringement to 3 million RMB (about 500,000 US dollars), six times the previous limit, it also includes clauses that will effectively prevent malicious registration of trademarks.

The amendment added that trademark agencies are not allowed to accept entrustment if they know or should know that their clients are conducting a malicious registration or infringing on the trademark rights of others. Agencies violating this law will face fines and a bad credit record filed by industrial and commercial authorities. Those involved in serious cases will have their businesses suspended.

The amendment also offers protection for renowned trademarks, giving owners the right to ban others from registering their trademarks or using similar ones — even if such brand names are not registered. But the words “renowned trademark” shall not be used in promotions or advertising.

According to the amendment, clauses regarding the examination period of applications for trademark registration were also changed to make sure a more efficient procedure.

As of June this year, China held the world’s largest number of registered trademarks and valid trademark registrations, at 8.17 million and 6.8 million respectively, according to latest official statistics.

For more legal information, please visit AsiaBridge Law