China IP Lawyer: how to register a trademark and protect your brand in China

2016-12-08T17:34:33+00:00

Before you enter into China market, it’s of great importance to firstly register your trademark in China. There are six distinct steps in obtaining, registering and protecting a trademark in China. Below we explain in details how to register and protect your trademark under Chinese law and trademark application practice. Consult our China IP lawyers for free preliminary consultation. China IP lawyer reminds you that the law discussed below may change over time and may not apply to current situation when you read this website.

1. Conducting a Trademark Clearance Search

Before applying for a trademark, you want to determine if your proposed name is already taken. This process is called a trademark clearance search. You can retain our China trademark lawyer’s service to conduct a preliminary trademark clearance search at China Trademark Office.

However, in most instances, if you engage a capable China trademark lawyer, the trademark attorney should conduct an extensive trademark search for you. This is because trademark attorneys are familiar with sophisticated search techniques on the China Trademark Office's website, which may uncover existing trademarks that are close to your proposed name.

In addition, an experienced attorney will be in the best position to interpret the search results obtained from the China Trademark Office website.

2. Filing the Trademark Application

Filing a trademark application can be done by retain our China trademark lawyer and we shall prepare all the documents and filing for you. You do not have to be an attorney to complete a trademark application and as such you can DIY. Though it is quite complicated job and we highly recommend you retain our service to do it. This is because completing a trademark application is complicated and if you put incorrect information in your application, you will not obtain your trademark.

Tips for registering a trademark in China

2016-12-07T19:46:20+00:00

If your company's brand is built around a distinctive logo or symbol you're not alone. Most businesses separate themselves from the competition with a distinctive logo or trademark for which they have exclusive rights. But here's the big question: Is your trademark protected and if not, do you know the necessary steps involved with making it secure? Our China trademark lawyer reminds you to register your trademark in China to protect your logo, brand and product in China to prevent counterfeiting or illegal copying.

Preparation before registering a trademark in China

Why get a trademark? There are many reasons businesses obtain trademarks. They include:

Develop an identity. Your trademark gives you a unique identity that no one else can use and helps people recognize your mark and associate it with your business or services.
Legal protection. With a registered trademark, you can legally stop anyone from registering or using your mark or a similar mark. After five years, your trademark becomes incontestable.
Internet protection. A trademark protects other businesses from fraudulently using your name on the internet and stealing business from you. In addition, no one can enter an internet domain address that in any way infringes on your trademark.

Now Let's talk about trademark filing

Filing for a trademark in China has a number of steps and can be tricky. The following tips will help you to correctly file your federal trademark application:

After a trademark application is filed, the China Trademark Office conducts an examination of the application. For example, if there is both an objection and a refusal to register the mark, then a response will be necessary to meet the objection and to overcome the refusal to register. This happens frequently, and an experienced trademark attorney will likely know just what to do when writing the response.

In our experience, it pays to respond to every office action. Many issues are within the range of discretion of the trademark examining attorney, and good legal arguments in support of the trademark may well be persuasive. Some firms charge substantial sums of money to prepare responses, and other firms might charge much less - therefore it may pay to shop around. Before filing a trademark application, find a cost effective trademark attorney. It is wise to assume things may not always go smoothly or quickly.

Select the best type of trademark application. There are two types: intent-to-use applications, and actual use applications. Both cost the same to file. The intent-to-use application can be filed long before actual use occurs, but there is a later government fee when completing the intent-to-use application. The trade off is that completing the intent-to-use application requires a statement of use or allegation of use, together with a specimen of use and an additional government fee. If an actual use application can be filed based on actual use in interstate commerce, then it will save money to do so.

Tips of good trademark filing practice in China

It pays to know what types of problems come up during the examination phase. Some problems that may come up: the trademark examiner may raise objections due to a similar prior mark, may object to the mark based on descriptiveness or misdecriptiveness of the mark, may object to the mark as having an improper geographical reference, and may object to the listing of the goods/services. There are other possible grounds of objection too.

In light of the above, another cost saving tip is this: have an experienced trademark attorney look at the mark prior to filing, just to see if there is something that jumps out. You probably wouldn't want to spend money to file an application if it was certain to fail. Here, too, it often pays to shop around. Some attorneys would charge quite a bit just to look at the mark, whereas others might take an interest and provide helpful comments at little or no additional charge. Trademark owners have reported a wide range of fees, some fees being reasonably low and some fees being unexpectedly high.

Another tip: it pays to do a trademark search prior to filing a trademark application. I would certainly recommend that you ask your trademark professional to perform at least an informal online search of the China Trademark Office records. Some may charge for this, while others may include it at no extra charge as part of the cost of filing a new trademark application. It therefore pays to ask. Formal trademark searches are also available, and other types of trademark search exist, depending on need.

Reminder by China trademark application lawyer

If there is a prior trademark that is similar to the trademark in question, such prior mark can be a real obstacle if it is in the same or similar field of goods/services as the mark in question. If the similar mark is not in the same field of goods/services, it may or may not be relevant depending on various factors such as how close their goods/services are, and their strength or uniqueness. Tip: An experienced trademark attorney may be able to provide a good guesstimate of the chances of overcoming such prior marks, but cannot predict the outcome with certainty.

Pitfall to avoid when register your trademark in China: downstream costs. Don't assume anything: ask your trademark professional for typical costs of responding to office actions. For an intent-to-use application, ask for costs of filing a specimen, a statement of use, and/or an allegation of use.

Have a really valuable trademark? Perhaps it is really strong, original, or clever. Then, you may well want to ask the costs for filing a trademark appeal. Yes, even before filing the application. Such an appeal typically includes legal citations, and therefore may or may not be costly. You might want to ask for typical appeal costs, even before you file a trademark application. Some trademark professionals might not handle appeals – this too would be interesting to know in advance. And, shop around – it never hurts to know the range of costs.

A China trademark is an excellent way to protect the slogans, symbols, or words that set your business apart. The above are some helpful tips for filing a national trademark application.

Trademark - China Trademark Lawyer