By now we have made it clear that you must register your trademarks if your company aspires to operate in China, or is already here; even if you have already registered them abroad before.
Read this eBook to learn why, if you haven't already: "An Introduction To China Trademark Registration."
Since the registration system for trademarks in China is 'first-to-file,' essentially first come, first served, it is possible for you to 'lose' your trademarks if you are not proactive in registering them.
Perhaps for companies which are obscure in China you will not have the problem that someone registers your trademarks before you, but especially if you have a modicum of fame be it with your products, brand, or services abroad, this may affect you.
So if upon undertaking China trademark registration you find that someone is in the process of registering, or has registered your trademark, what do you do?
In this blog we'll explore your options...
How To Find If Someone Has Taken Your China Trademark
If you've made the decision to enter the China market by opening a company here then registering your trademarks is an essential part of this process. Unfortunately if you have already registered trademarks abroad you're going to need to do it again, as China has its own licensing laws, and so abiding by them is the only way to protect your IP.
If you're unlucky you will immediately see that someone has taken your trademarks and is using them for their own gain. These may be either legitimately, or illegally such as with the 'fake Apple stores' that we recently saw in China which are almost identical to the real thing:
(Image from The Wire)
Download our FREE eBook "An Introduction To China Trademark Registration" and learn why and how to protect yourself when doing business in China.
Run A China Trademark Search
What is more likely than the very brazen Apple example above, is that upon undertaking a China trademark search prior to filing your application to register your trademarks, you will be alerted that there is a match in the system.
You can do this for free using the official SAIC TMO trademark database (Warning: You can only do this in Chinese, but the resource is there in any case, so get local help if you need to).
Often it's necessary to commission a registered agency to do the search for you as foreign companies without a functioning presence in China may not undertake one directly, although if you do have a China company you are free to do your own search although this will necessitate thorough knowledge of Chinese language and trademark law.
All being well you will find that no one has registered your trademarks, so in this case you can go ahead and register your own.
But if a match comes up you will need to do the following:
- Check when the application was filed. After filing your registration, the SAIC will issue a preliminary approval and publish the proposed trademark in the ‘China Trademark Gazette.’ You will have 3 months from its publication to appeal against it. Find them online here.
- Should someone be trying to register your trademark/s you should use a registered agency to appeal against it. It is now going to get complex, and much paperwork and bureaucracy will ensue, therefore a local expert will be able to negotiate this for you.
In short, both you and your counterpart who is trying to register your trademark will need to provide proof of why to be granted rights over it. The SAIC will deliberate and decide whether to grant or deny the request. There may also be a further two appeals, once to the TRAB (trademark review and adjudication board) and subsequently once to the People's court. As you can imagine, this could be expensive, and will be very time-consuming.
If this is you, speak to us directly here, explaining the situation.
If Your Trademark Has Already Been Registered Officially In China...
This is where the problems begin I'm afraid.
This is most likely to occur because you have left it too late to register your trademarks. Preferably this should occur as soon as you have an idea that you may be trading or manufacturing in China, in order to head off the problems caused by having to fight for, or abandon, your trademarks.
If you are in the position where someone is already using your trademark because they have registered it then you have 2 options:
- Pay them settlement for them to sign the rights over to you.
- Pay them a regular licensing fee in order to be allowed to use their / your trademark on your goods and services.
If you're lucky this won't be too expensive, but never underestimate the local drive to 'make a buck' so don't count on it.
If Someone Is Illegally Using Your Trademark/s...
If you have protected your IP by registering trademarks then the Chinese legal system will support you.
Will it be expensive? Probably. Will it take a long time? Probably. However what amount of time and money is worth protecting the very fibre of your business from those that would seek to take it for their own gain?
According to China Law Blog's Dan Harris:
"The Beijing [number 1 intermediate] court (which hears about 10% of all China IP cases) has seen its case load increase from “4,748 cases in 2008 to 11,305 in 2012, an increase of nearly 150%,” with copyright cases representing about half the total."
These statistics demonstrate that:
"IP enforcement/IP protection is improving in China for two main reasons. First, Chinese companies and foreign companies alike are now realizing that it makes sense for them to register their trademarks, copyrights and patents in China so that they have an opportunity at being able to protect them (in the courts, among other places). And two, China’s courts are increasingly realizing the importance of protecting IP in China, largely because Chinese companies increasingly want them to grant IP protections."
Despite the fact this will be a difficult road, possibly fraught with costs and delays, IP protection is improving and therefore it's safe to say that litigating, even if it is as a last resort, will yield the correct result more often than not if your company has legitimate right to feel aggrieved.
Now we know the risks of not registering trademarks in China, and that there is a small 3 month window where we can appeal against those trying to register what should be ours.
China litigation and regaining rights from those who are seen to have legitimately registered them is somewhat murkier, but there are options, albeit probably expensive ones.
The best option is to register in advance, protecting ourselves from these issues.
What's your take on trademark registration in China? Have you gone through the process? What was difficult or easy about it? Do you have any tips to share that may help our community?
Please leave any comments and questions below in the comments section and we'll be glad to help.