Trademark and copyright protection are an integral part of protecting any organization’s intellectual property (IP) rights.

For many, when thinking about a trademark, the first thing that comes to mind is the company logo or the brand name. Some people may also assume that trademarks are only a concern for high-end international brands like Christian Dior and McDonalds.  In reality, trademark protection is essential for every business coming to China.

Why Protecting Your Trademark is Important

Trademarks are a business asset in today’s world where IP is king. Understanding trademark protection for a brand is key as, over time, trademarks can help protect the brand asset that consumers identify with and relate to an organization.

Failure to protect your trademark could potentially result in possible infringement of your trademark, costing you huge losses in time and money.   Well known brands are most vulnerable to trademark infringement and will most likely encounter trademark squatters, counterfeiters, or grey market suppliers at some point. Consider the case of New Balance which recently won $3.85 million in damage reimbursement following a two decades of court battle for its trademark infringement by New Barlun (a Chinese copycat).

China’s Policy on Trademark Protection Laws

China basically does not recognize trademarks registered in another jurisdiction. Hence, it is vital that companies must first seek to register the trademark with the Chinese Trade Mark Office (CTMO).  For broader and complete protection, you must understand how to register the trademark properly.

China is a first-to-register jurisdiction, not a first-to-use jurisdiction.  That means companies failing to register their trademarks in China could possibly lose an infringement case against a squatter, even if they had more than sufficient evidence to show the brand identity really belongs to them. 

Protecting Your Trademark in China

The most effective way to protect your trademark in China is through registering it in both English and in local characters (literal Chinese translation). This transliteration allows businesses and organizations to protect trademark infringement by rogue businesses in mainland China. 

Yet, most organizations fail to get a proper transliteration of their original trademark, making it vulnerable to trademark theft by third parties in China. This could be avoided by seeking help from a trademark attorney who is also an expert or has resources to get a trademark translation containing a proper combination of characters and words with accurate meaning and relevance to the original trademark.

Also, a trademark registration is valid only for the first 7 years. It needs to be renewed to be valid for another 10 years.  A trademark lawyer can help analyze your logos and company name to establish the strengths and weaknesses of those marks, and developing a long-term protection plan.

Steps to Register Your Trademark in China

Step I: Trademark Registration

Trademarks in China could be of any type including words, letters, 3D shapes, numbers, design, patterns, colors, color combinations, etc or all of the above. China, being a member of the World Trade Organization, is obligated to protect and file trademark and intellectual property registrations. There are two ways a company could register their trademark or intellectual property in China. The first is by registering with the local Chinese Trade Mark Office (CTMO). The second method is to file the trademark with World Intellectual Property Office (WIPO). However, if you choose the second method, then your trademark application registration must start from the country your mark originated from.

Step II: Choose the Right Subclass for Product or Services

Although China accepts the International Classification of Goods and Services under the 1957 Nice Agreement, it further divides these classes into subclasses. For instance, general footwear and boots belong to different subclasses/subgroups in China. In that case, same trademark could be registered by different companies in each subclass if these subclasses are not considered as similar. Thus, it is crucial that your trademark application covers all the relevant products and services – in each of the subclasses – pertaining to the business’ scope when filing for registration.

Step III: Registering Your Trademark in Chinese Transliteration

As discussed, simply registering your local trademark in your home country language may not provide complete protection from trademark infringement. 

Other than the three basic steps for registering and protecting your intellectual property rights in China, trademark registration also has some rules by China. It includes the following:

Your trademark must be legal

This holds without saying but your trademark cannot be identical or similar to the name or flag of a state or an international organization. It cannot discriminate against a nationality or indulge in exaggerated or fraudulent advertising.

Your trademark must be available for registration

China's first-to-file trademark registration policy means whoever is the first to register a particular trademark with CTMO, will have this in CTMO’s trademark database. The database covers preliminary approvals, final approvals, renewals, and modifications of all trademarks and would be able to tell whether the trademark you are seeking to register is available or not.

Note that if someone has already taken up your trademark, this is not reversible unless your organization could prove that your trademark had been infringed upon before you made it to China. However, this too would be a tough legal battle in court and would require help of a trademark attorney who knows the rules and Chinese laws for trademark registration.

Your trademark must be distinctive

Your trademark must be unique, i.e., it must be easily distinguishable from the producer of other goods and services.

Your trademark cannot be too exclusive

China does not accept marks that refer to the nature or model of the good or service itself – a company selling apples will not be able to register an apple or an image of an apple as generic names are free to be used by all. The mark also cannot sabotage competitors by referring to a technical effect, thereby confusing consumers when choosing a product or service selling the same or similar technical effect.

By registering your trademark through following all the above steps properly, you can help ensure that your products or services will not end up in grey markets or become infringed upon by third party rogue businesses in China. However, it is a complicated process and requires experienced counsel. A minor mistake in any of the above steps could cost your organization huge losses to reputation. Hence, it is beneficial that you seek help from a professional trademark attorney to help you navigate the complex web of trademark and intellectual property protection in China.

Protecting your brand name and thus safeguarding your company’s intellectual property is one of the key steps to conduct before entering the Chinese market. 

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