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Register Your Trade Mark In China And Avoid Squatters

Why should you register your trade mark in China?

Well, for starters it is the biggest market in the world.

Plus, China receives the most significant number of trade mark applications of anywhere. And doing business in China without registering your trade mark is extremely risky.

Conquering the East may not be in your immediate business plan. However, you still ought to look into getting your trade mark registered. China is a first-to-file country, which means any third-party can register any trade marks in China, including the trade marks you have created.

So, if you don’t register your trade mark in China before doing business, you could find yourself at the mercy of Trade Mark Squatters; people who actively register trade marks to earn money, or to make things harder for you.

If someone else registers your trade mark, it will make it almost impossible to engage in the Chinese market long-term because it will be:

  • Impossible for you to sell and distribute in China
  • Difficult to manufacture in China
  • Difficult to open a retail outlet
  • Impossible to distribute your products on the internet

What happens if you fall prey to trade mark squatters?

The limits of bad faith that the China Trademark Office (CTMO) have to work with are rather woolly. That means if you want to cancel the trade mark registration of your mark made by a third-party applicant, proving bad faith is tricky.

The legal remedies in China are time-consuming (with meagre success rates), which means you only have two other options:

  • Negotiating to buy back your trade mark
  • Adapting your trade mark for the Chinese market by registering elements distinctive enough to increase the chances of acceptance

That’s why you should register your trade mark before you start trading in China.

When should you register your trade mark in China?

Even if doing business in China is still a long way off for you, it’s essential you begin the registration process – before someone else does.

That means NOW – before you make contact with any potential suppliers or outlets.

Before you can sign any deals with distributors, you’ll be asked to prove you are the registered owner of your trade mark in China. But don’t forget, trade marks are protected on a country-by-country basis. That means protection in China is not recognised in Hong Kong, Macao and Taiwan.

Registration is a long process, which can take anything from 18 to 24 months – hence planning is essential.

How to protect your trade mark in China

It isn’t a simple process, which is why it’s always wise to use the services of a trade mark attorney.

The CTMO has specific requirements that must be fulfilled:

  • In addition to the classes from the Nice classification, the CTMO also uses subclasses
  • Ten products or services by protected class can be registered for each application
  • You must file all the correct documentation in support of the application

With regards to that last point, it would be a good idea to have a pre-application search conducted, so you can discover what’s on the Register in advance.

If your application is rejected, the whole procedure has to be repeated from the beginning. Bearing in mind how long the entire process takes, you want to be sure your application is spot on (hence needing an expert).

Can you imagine the frustration of your application being rejected and a third party nipping in and registering your trade mark for themselves?

Don’t leave your business’s most significant asset unprotected.

 

Rachael Ward, of Ward Trade Marks, has helped many clients avoid trade mark squatters by successfully registering their trade marks in China. Find out more by calling +44 (0) 1223 421779 for an informal chat.

 

 

 

 

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May 10, 2018 Rachael share this article