Intellectual Property

Category Archive Intellectual Property

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6 Facts you should know about filing a Trademark in China

Filing a trademark to protect your intellectual property is an incredibly important step to take no matter where you want to conduct business. Since every country’s trademark laws differ, Incorp China has compiled interesting facts you should be aware of before filing your trademark in Mainland China:

 

  1. First-to-File Concept

Think of it as a first-come-first-serve basis. Whoever files the trademark first owns rights to the idea. A good example is the iPad-scandal in 2012 that cost Apple $60 million. Proview Technology had filed a trademark for the name “iPad” in China. Hence Apple was not legally able to sell the iPad2 under that name. For more info on the case, Reuters Shanghai (https://www.reuters.com/article/us-apple-china/apple-pays-60-million-to-settle-china-ipad-trademark-dispute-idUSBRE86104320120702) wrote a great piece on this.

Facit: Early filing is paramount. File a trademark before you go ahead with business.

 

2. Trademark Applications Take Time

The duration for approving a trademark in China can take between 9-24 months. But don’t despair – once your trademark is approved it will be valid for the next 10 years from the date of registration.

Facit: Plan ahead – this doesn’t mean you cannot go ahead with your everyday business but beware of your business’ liability.

 

3. Use Requirements

Not using your trademark for three consecutive years from the date of registration in Mainland China might make it subject to cancellation. There are no use requirements beyond that.

Facit: If you invest in a trademark use it sooner rather than later.

 

4. Your Brand Name Is Your Wealth

register your trademark in both English and in Chinese text (e.g. the name of the product). Registering your brand or product name in Chinese will ensure that Chinese consumers will remember your product’s name better. Even more importantly though, if you don’t register a Chinese name, someone else could register a Chinese translation of it and therefore trick customers into believing their product is affiliated with your brand. Think of the American brand New Balance and it’s fake Chinese counterparts: New Bunren, New Barlun, New Bailon, and many more.

Look at what happened with basketball legend Michael Jordan vs the knockoff brand Qiaodan: https://www.nytimes.com/2016/12/07/business/international/china-michael-jordan-trademark-lawsuit.html

Facit: Your brand name goes beyond a pretty logo – protect your reputation by owning the legal rights to your Chinese name as well.

 

5. Divide and Conquer

Incorp China advises its clients to apply for the English and Chinese trademark separately. That way, even if one application is rejected, the other one will not be influenced.

Facit: Don’t put all your eggs in one basket.

 

6. Color Theory

Most logos are colorful. Submitting your trademark application in a certain color, however, will limit your use of the trademark to that single color. In practice, this means that if you trademark your logo in red you will not legally be able to stop other people from using your logo in the color green. Hence, we strongly suggest our clients send us a digital copy of their logo in back and white. The trademark protection will then cover all colors.

Facit: For your logo to apply to all color schemes, submit it in black and white.

 

Like what you read? Why not call us (+1 (561) 729 6508) or email us (info@incorpchina.com) for a free consultation. Let your paperwork be dealt with by experts on the ground.

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Breaking Down The Trademark Application Process in China

Everybody is familiar with the fundamental concept of trademarks. You have an idea or name and want to protect this intellectual property from being copied or claimed by someone else.

The process

In simplified terms, in China, this process takes about four steps.

  1. Do your research. It is advised to do a Trademark Pre-Filing Search. You can hire an agent via Incorp China to check with the China Trademark Registration Office whether the trademark you are about to register has already been applied for by another entity. If this is the case your application would be rejected immediately were you still to go forward with your application.
  2. Prepare the paperwork and choose a classification for your trademark.
    Your trademark can include anything from words, designs, letters, numerals, 3D symbols and graphics and even a combination of colors. Do stay clear of city names as well as words and family names with political history. There are several classifications that your trademark can be filed under.
  3. Submit the trademark application and wait for the result of the initial review. Once your application is approved you will receive a Notice of Acceptance.
  4. The Notice of Acceptance will be issued in a newsletter referred to as the Gazette for three months. As long as the China Trademark Registration Office does not receive any objections during this period, your application is not rejected and the trademark will be granted.

As you can tell, the Chinese trademark application process is not too different from that of the US. While, however, according to the International Trademark Association (INTA) in the US “over 95 percent of trademark applications are filed electronically”, in China it is highly beneficial to file your paperwork via an agent. As a foreigner, your paperwork will likely not be prioritized. Furthermore, having a native Chinese agent fill out and check your paperwork will mean there will be a significantly lower chance of making an error. If you were to make an error your paperwork would be rejected and you may not be refunded the application fees.

Thankfully Incorp China offers a free consultation. Let us help you. Call us (+1 (561) 729 6508) or email us (info@incorpchina.com) and we will be happy to answer any questions. Incorp China is backed by a team of fantastic lawyers who have filed for hundreds of trademark applications.

Liked what you read? Read about our top 6 tips you need to know if you want to file for a trademark in China