Doing business overseas is a massive accomplishment for businesses of all kinds. If you decide to go global and you want to enter markets such as China, you will want to make sure you have the proper paperwork in place for your trademark.
Even more so, you want to make sure that you keep up with your trademark renewal to ensure that you can continue to run your business under your preferred trademark name. If you currently do business in China or are in the process of doing so, you will want to learn more about keeping up with your trademark. Continue reading below to learn more about the trademark process and the trademark renewal process in China.
What Is the Trademark Law in China?
China only recognizes trademarks registered within its jurisdiction, and they are a “first-to-file country,” which means that the trademarks are typically given to the first business to file the trademark application. If you have an idea that you wish to trademark, it is recommended that you start the trademark process as soon as possible.
If you fail to trademark your business name, it leaves room for bad faith registration. It isn’t uncommon for businesses or individuals to knowingly file someone else’s trademark.
When to File Your Trademark Application
It is best to file your trademark application with the Chinese government within six months of submitting your trademark application in your home country. When you do it within six months, you can use your original priority date on your Chinese trademark.
Chinese Trademark Proceedings
The Chinese trademark registration process takes three to six months to complete. Depending on the volume of trademarks in the queue, it can take several months before your trademark application gets assigned to an examiner.
The Chinese Trademark Office, also known as the CTMO, tries to process their applications within six to nine months from start to finish, but don’t expect your application to be approved within that time frame. You should expect to receive approval within twelve to eighteen months.
What Happens if Someone Files My Trademark?
As mentioned earlier, it isn’t uncommon for someone to file a trademark in bad faith. If you feel that someone else filed your trademark in bad faith, you can file an Opposition.
The opposition process takes some time to complete, averaging from twelve to eighteen months. Most clients don’t have their opposition request reviewed until about eleven months after they send in the original request.
You can change your trademark to avoid infringement if you don’t want to go through the opposition process. Even if the original trademark were yours, it would be best to change your trademark since someone already claimed it.
You may be able to get away with minor changes in the trademark to receive an approval, but this depends on a case-by-case basis. The Chinese trademark office may deny your request if you need to make large scale changes. If you are unsure what to do, you may want to contact a trademark attorney for more information.
Filing a Trademark Renewal
You will need to meet renewal deadlines to ensure that your trademark does not expire. Once you have your trademark, you must renew it at least once every ten years. It typically takes about one month for you to receive your approval for the renewal.
Of course, as with any process, there are some potential delays. To ensure you receive your approval before your deadline, send your application for trademark renewal at least six to seven months before your tenth year.
Why Should You Register Your Trademark?
It is imperative that you register your trademark in China, even if you are a well-known company. As you now know, several different entities profit off making counterfeit items. For example, a well-known shoe company, New Balance, had to fight for its trademark rights in China for ten years before it won its trademark.
If you don’t register your name and someone else takes it, you must go through several legal proceedings to get your trademark back. This can cost you and your business thousands of dollars. To avoid this, it is best to register your name as soon as you can.
Chinese Definition of a Trademark
A trademark sign helps consumers distinguish the services or goods of different producers. This mark can either be a specific color combination, words, or numerals.
Additional marks used for trademarks:
- Three-dimensional signs
The mark can also be a combination of all the above listed factors. In order to register your trademark in China, you must follow certain aspects.
The Mark Cannot Be Functional
China does not accept trademark applications that refer to the model of the service or the good itself. For example, if your business sells apples, you can’t just register an image of an apple or the word “Apple.” Any general imagery is free to use by any company, so registering an apple by itself hinders other companies.
The trademark must not sabotage competitors by using similar words or symbols related to other companies. For example, if you also sell technology devices but wish to label your company as Apple or something close to that name, you could face infringement from Apple.
The Trademark Must Be Legal
Your trademark cannot be similar to the name of an international organization or state’s flag. Your brand also cannot discriminate against anyone or any nationality. The Chinese trademark office will deny your request if your trademark indulges in exaggerated or fraudulent advertising.
The Trademark Must Be Available for Registration
Before submitting your application for your Chinese trademark, head over to the Chinese trademark office’s website. They have a database full of all the current trademarks registered in the country.
Make sure you look up your trademark name to ensure that it is available for you to register. The database contains preliminary approvals, trademark renewals, final approvals, and modifications of all trademarks.
The Trademark Must Be Distinctive
Similar to the trademark being a legal rule, your trademark must be distinctive. This means that you should be able to clearly distinguish your trademark from that of other services and goods.
Where to File a Trademark in China
If you wish to file your trademark in China, you will have to do so through the Trademark Office, China National Intellectual Property Administration. You can apply directly through this organization or through the World Intellectual Property Organization. It is essential that you reach out to a registered agent if you don’t have a place of business or residency in China.
Choose Your Product and Service Subclass
When filing your trademark, you have to file your application per class of goods or services. You will also need to submit a precise list of services or goods for which the protection needs. For example, footwear and boots fall under specific subclasses in China, so your trademark could be registered by different companies if the subclass is deemed different from yours.
When you file your trademark, it is imperative that you ensure your trademark covers all relevant services and products. Make sure it covers relevant goods and services in all applicable subclasses, or else you risk the chance of someone legally filing your trademark under a different subclass.
Register the Trademark in Chinese Characters
It is crucial to note that you must file your trademark in Chinese characters as well. If you don’t, you risk the chance of another company coming in and taking your brand in their native language.
If other firms use your trademark in their locally spoken language, there is a chance you could lose customers. It could also cause you to diminish your brand value. An example of this is with Mercedes-Benz.
When they entered the Chinese market, they had difficulty translating their name, as it directly translated to “rush to die.” Make sure you work with a reputable agent to ensure that your name gets correctly translated and not misconstrued by your potential new clients.
Benefits of Filing With the Chinese Trademark Office
As mentioned earlier, if you don’t have residency in China or a place of business in the country, you must file your trademark through a registered agent. When you file with a reputable registered agent, they can help you find the correct class and subclass to file under.
If you file through the World Intellectual Property Organization, the examiner will decide the subclass on your behalf. Although this sounds helpful, there is a chance they could miss a subclass.
How To Choose Your Chinese Trademark Name
To avoid infringement or any miscommunication, you must register the direct translation of or the Chinese version of your trademark. There are a few different strategies you can use to ensure that you choose the correct Chinese trademark name.
Phonetic translations involve creating a Chinese character name that sounds like the original trademark. For example, Audi is known as Ao Di, and McDonald’s is known as Mai Dang Lao.
This strategy works best if the brand already has an established reputation amongst consumers in China. This can be a tricky strategy because of the several different dialects in China. Your trademark may directly translate as you want in one dialect, but it could mean something undesirable in another.
Literal translations tend to work if your trademark has a distinctive meaning. For example, Apple trademarked its name as “Ping Guo,” which is a literal translation for apple. Another great example is the Palmolive brand.
They trademarked their name as Zong Lan, which is a direct translation of “palm” and “olive.” If your company chooses to go this route, be sure to invest time in building the association with your trademark name and the Chinese character trademark.
Combining Literal and Phonetic
Combining literal and phonetic translations is the most effective strategy if you are able to combine the two. This strategy takes the sound of your trademark name and combines it with a positive defining trait of your brand. You can also use a positive Chinese cultural reference.
For example, Coca-Cola goes by “Ke Kou Ke Le,” which translates to “taste and be happy.” This perfectly combines literal and phonetic translation.
To ensure that you have the right combination of the two, make sure you work with a registered agent to help you. Again, you don’t want to create a trademark name that could mean well in one dialect but could mean something not pleasant in another.
Why Is Trademark Renewal Important?
As mentioned earlier, you want to make sure you renew your trademark once every ten years. As a general rule of thumb, you should send in your renewal application at least six to seven months before your ten-year expiration date. It is crucial that you renew your trademark because if you don’t, you risk leaving a window open for another entity to come to take your trademark.
China Trademarks and Manufacturers
The trademark renewal process is just as important as the trademark application process because they both ensure that you retain the rights to your trademark. It is imperative that you make sure to renew your trademark once every ten years, or else you risk losing the trademark you worked so hard on.
If you wish to break into the Chinese market and you need a reputable manufacturer to help you, contact us. Our team is here to answer any questions or concerns you may have.