5 Essential Questions on Trademarks Protecting your Intellectual Property IP
Concise answers to 5 strategic questions about Trademarks Protecting your Intellectual Property (IP). Additional links provided with info on Trademarks in China.
Author’s Point of View:
This blog post is written for businesspeople who design, import and/or distribute branded products. If you are worried about knock offs and counterfeits in China, this article is for you. Read more about Trademarks Protecting your Intellectual Property.
The lessons in this blog post are pulled from the author’s 20 years as a buyer’s representative in China, helping clients manage their global supply chains.
Table of Contents ... (Trademarks Protecting your Intellectual Property)
- Author’s Point of View:
- Introduction
- What business assets can be protected with a TM application in China?
- Brand Name
- Slogan
- Logo
- Fonts
- Classifications & Categories
- Pro Tip: Combine all elements into a single image file and make a single TM application
- Common Mistake: Submitting a logo in color
- Common Mistake: Asking our random Chinese speaker to translate your brand names and slogans
- What are the pros & cons of registering the TM in China vs. back home?
- Is there global coverage? (World Intellectual Property Organization (WIPO)/ Madrid System)
- TM registration: China Does It different
- Can a foreigner register and enforce TM rights in China?
- How a typical TM registration scam works.
- How to find an affordable lawyer in China that speaks English?
- Can foreigners get a fair shake in a China court of law?
- What is the process, timeframe and budget to register a TM in China?
- China Trademark Registration Procedure (Summary)
- Required Documents
- Suggested Documents
- Time Frame - (Trademarks Protecting your Intellectual Property)
- How long are Trademarks valid in China?
- Conclusion: Two VERY Important aspects to consider
- Additional Resources
- About the author: Michael J. Bellamy
Introduction
Over the past decade, the staff at AsiaBridge Law have written extensively on the subjects of Trademarks (TM) and how to protect Intellectual Property (IP) when doing business with China. For this week’s blog post we have curated “best of” content from past blog posts, whitepapers and video tutorials to create a list of essential resources for business people who wish to get up to speed quickly on the topic of TM’s in China.
Our goal in writing this report is to provide concise answers to 5 strategic questions about (TM’s) trademarks protecting your intellectual property in China. Additional links will be provided for readers who wish to dig deeper into any of the 5 topics below.
5 Essential Questions on Trademarks Protecting your Intellectual Property (IP)
- What business assets can be protected with a TM application in China?
- What are the pros & cons of registering the TM in China vs. back home?
- Can a foreigner register and enforce TM rights in China?
- What is the process, timeframe and budget to register a TM in China?
Pro Tip: black white, 3 in one - How long are Trademarks valid in China once registered?
But before we dive into the topic at hand, let’s quickly review the definition of “trademark” and clarify how it is different from other IP such as copyright and patents.
Copyright
The form of intellectual property known as copyright protects your right to reproduce, publish, or sell your original work of authorship. For example: literary, musical, dramatic, artistic, or architectural works.
What can be protected under copyright law?
Copyright only protects what is known as the “form of material expression”. The ideas, concepts, techniques themselves are not protected until they are expressed in a physical form. It is the physical form that can be registered as a copyright. For example, a story handed down for generations in spoken word format is not protected, but the moment it is put on paper, that document can enjoy copyright protection. For copyright to apply, the work must be “fixed in a tangible form”.
Read more Copyrights in China here.
Patent
China admits three patent classifications:
1) Design Patent protects new designs of any shapes, patterns or colors (or combination of all three) creating an aesthetic feeling, fit for industrial application.
2) Utility model protects ideas providing technical solutions relating to the shape or structure (or combination of both) for practical use.
3) Invention Patent protects technical solutions relating to products, processes or improvements.
Read more about Patents in China here.
Now back to Trademarks ...
Trademark
The dictionary states:
A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.
A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. Some examples include brand names, slogans, and logos.
The term “trademark” is often used in a general sense to refer to both trademarks and service marks.
Copyright doesn’t cover words, phrases and symbols, for two main reasons.
a) In simple terms, trademarks are works of small size. A few words make up a brand name or slogan. Copyright on the other hand is reserved for a full-length creative work such as a book, film or play, in most cases.
b) Copyright only covers the “work” as delivered via a “fixed and tangible form”. For example, if somehow you were able to get your catch phrase (when printed on paper) registered as a copyright, the copyright would only protect you from others who seek to stick that specific phrase on the same media (paper). All other formats, such as videos and photos would not be covered.
What business assets can be protected with a TM application in China?
The short answer is “logos, slogans and brand names”.
A full answer needs to explain how product classifications work and how multiple colors, languages, fonts and images can be protected under a Trademark registration in China (Trademarks Protecting your Intellectual Property).
To help build the most comprehensive application possible, consider the following:
- Brand Name:
Not just the name in English, but also the name in the local language of the target market. The brand “coke” is found around the world, but English language “coke” is supplemented by local language “kekou kele” in China for example. Both languages need protection.
- Slogan:
Not just in English, but also in the local language as well.
- Logo:
The logo is essentially an image file. If you have variations of your corporate logo, share them all with your lawyer in hopes coverage can be extended to all of them.
- Fonts:
If your slogan and brand appear in a propriety font (think the “Coca-Cola” script) your application should aim to protect not only the brand in that font, but also prevent other brands from using your specific font!
- Classifications & Categories:
For the purpose of the trademark application, China uses the Nice Classification system prepared by the World Intellectual Property Organization (WIPO). This system has 45 Classifications and under each classification you will find many different sub-classifications called “categories”. It is important to pick the relevant classification and categories for your trademark application and know that owning a trademark on your brand name is not the same as owning a unique name. “Delta” is often given as an example of how one brand name has been trademarked by multiple companies. Delta Airlines, Delta Facets, Delta Dental….Applications with more than one classification are treated as different applications.
Pro Tip: Combine all elements into a single image file and make a single TM application
An image file, called a “specimen”, is used in the TM application. Provide your China lawyer with as many of the following item as possible, as they may be able to fit them all into 1 specimen and help you avoid extra costs associated with registering each element separately:
- Brand name (in all applicable languages) in basic text
- Brand name (in all applicable languages) in stylized/custom font (if applicable)
- Logo
- Slogan (in all applicable languages) in basic text
- Slogan (in all applicable languages) in stylized/custom font (if applicable)
In theory, if a competitor uses any part or combination of parts found in this “specimen”, they will be in violation of your intellectual property rights. An inexperienced (or perhaps unethical) lawyer may try to get you to pay for multiple applications when in reality, one application done right, can give you sufficient protection.
Common Mistake: Submitting a logo in color
Most corporate logos are in certain color- the golden arches of McDonalds or Pepsi’s red white and blue. However, if you submit your application in China in color, then there is a chance that your rights could be limited to only that color choice. In an extreme case, it could mean that if your logo is red in the application, you can’t stop other people to use the same logo in green. For this reason, the lawyers in the AsiaBridge Law network suggest clients send a digital copy of the logo in black and white, as the TM protection will cover all color combinations!
Common Mistake: Asking a random Chinese speaker to translate your brand names and slogans
Even if you don’t plan to sell your product in China, you should still protect the Chinese translation of your brand.
You don’t have to pay extra for this coverage, so make the effort when you apply for the TM.
If you don’t register a Chinese name, someone else could register the Chinese transliteration of your trademark to make consumers believe that they are connected to your brand (like what happened with ‘Air Jordan – Qiaodan’ http://chinasourcinginfo.org/2012/03/07/michael-jordan/!)
Translating a brand name or slogan into Chinese is a specialized skill. It would be unwise to have a lawyer or random Chinese-speaking contact come up with the local language name. To make things even more complex, different dialects across China pronounce names differently with different meanings.
Consider engaging a specialist to come up with your Chinese language brands and slogans.
What are the pros & cons of registering the TM in China vs. back home? Is there global coverage?
Assuming you have the time and budget, the ideal move would be to have trademark coverage in not only the markets where your product will be sold but also in the locations where it is likely to be knocked off- meaning China.
Is there a one-stop-shop for global TM registration?
A: Yes and no.
Here is the full story:
The World Intellectual Property Organization (WIPO) is a United Nation’s agency that primarily focuses on protecting both industrial property (inventions, trademarks and designs) and copyrighted materials. The Madrid System (officially the Madrid System for the International Registration of Marks) under WIPO is the primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world.
In theory, the Madrid system provides a centrally administered system for obtaining a bundle of trademark registrations in separate jurisdictions. Registration through the Madrid system does not create a unified registration, rather, it creates a bundle of national rights through an international registration able to be administered centrally.
In terms of China IP, you should be aware of the following if you are considering to file via WIPO.
- No chance to revise or adjust application when using WIPO
Some international companies filing a trademark through Madrid System may end up wasting resources and even face getting rejected after waiting for 12 to 18 months. Normally, no pre-application screening is performed and there is no chance to revise an application when you use the Madrid system. That step is available if you register you IP with a Chinese lawyer directly in China.
- Lack of protection under WIPO
Even though the trademark has been officially registered in China through WIPO, troubles may arise late when you wish to enforce you company’s rights in China. Although a WIPO certificate states the company’s rights under Chinese trademark law, in actual business and legal application, the Chinese courts, authorities and business associates frequently do not acknowledge the certificate provided by WIPO, instead they will require a copy of a certificate issued by Chinese Trademark Office (CTMO)!
- No chance to select the categories under the classification
When you apply in China directly, you can decide the subclasses that you want to cover in your application. But when you file in the Madrid system, they will select which subclasses for your application without consulting you. This could cause lots of headaches down the road.
TM registration: Once Again- China Does It different
Chinese trademark law is very different from overseas. Many problems crop up when using international lawyers who are knowledgeable about WIPO but have no experience with China side issues. Luckily, assuming you have a professional, English speaking Chinese lawyer who is experienced submitting TM applications in China, the process is fast and affordable. Details below.
Can a foreigner register and enforce TM rights in China?
Only authorized registration agents are allowed to file applications in China. However, you need not live in China to hire a registration agent. And you need not be Chinese or live in China to be the owner of a Chinese patent and be protected under Chinese law.
Warning: At the time of writing, the Chinese government does not offer a self-service IP registration portal like those found in the US and Europe. However, there are some very savvy Chinese marketers who have created websites that appear to be the official patent office. They even liberally apply the government seal in their marketing materials.
How the scam works:
On the websites they offer a “search” bar that claims you can automatically search the government database in English, for free! Too good to be true.
- They use the “register to search” hook to collect your contact information
- After they have your information, they let you conduct a search.
- The search always shows that there is a conflict over your target IP in China and it will be suggested that you hire them immediately to sort this out!
- Their sales team will quote a very low price to get you signed up for IP registration.
- Later you will realize the initial quote was low because it doesn’t cover many of the steps needed to actually register your IP in China.
- You will be forced to pay them more and more. They already have your sensitive information, so they can easily blackmail you by saying “they have spent a lot of resourced looking into your case and if you don’t register the IP with them right now, they will turn the IP over to a Chinese company that wants to register the IP”!
Therefore, it’s essential to do your due diligence on your lawyers in China.
Related Content:
How to find an affordable lawyer in China that speaks English?
Here is a blog post that covers:
- Overview of the 3 types of law firms operating in China
- 5 key questions to ask BEFORE you hire a lawyer in China
- Essential items to include in your lawyer’s engagement letter
- How much should you pay an English-speaking Chinese lawyer?
Can foreigners get a fair shake in a China court of law?
- The short answer is “yes, if you play by local rules.”
- The long answer is explained during the first 5 minutes of this video tutorial I made for the China Sourcing Academy entitled “An Inside look at the Chinese courts”.
What is the process, timeframe and budget to register a TM in China?
China Trademark Registration Procedure (Summary)
- Search in the database of China Trademark Office (CTO) to make sure the trademark has not previously been registered.
- Organize the technical translations and prepare all documents.
- Prepare and submit application to the CTO upon official confirmation received that no errors are found.
- Follow the application and update client as the application moves through the various bureaus.
Required Documents
- Desired Trademark Specimen
- Description of products and services (within each classyou must specify your products and services).
- Details of the administrative contact (this is the person where all communications will arrive).
- ID of the applicant (if it’s an individual) or business license of the applicant (if it’s an entity).
- Power of Attorney (if needed in some cases).
Suggested Documents
These items are great for the lawyer to have on hand if possible:
- Evidence that can demonstrate that the trademark has been used in China and is well known in China, including but not limited to:
- A brief introduction of the applicant enterprise;
- The design intention and idea of the trademark (to prove the originality of the trademark);
- Any honors/awards the applicant’s enterprise and its products attaching the trademark have gained;
- Proof of use and publicity of the trademark. Including but not limited to:
a) Evidence for sale of goods with the trademark (bulk sales invoices, contracts, bills of lading, letters of credit, shipping documents, sales statistics, etc.);
b) Evidence of publicity of the trademark (advertising photos, advertising contracts, participation in exhibitions, report in media etc.);
- Evidence that can demonstrate the trademark is well-known among consumers (consumer survey, etc.) both inside China and/or overseas and/or in the home market.
- It’s better if the above-mentioned evidence could show the trademark directly, the earlier the date, the longer the duration, the broader of the territory the better.
- Other rights that the applicant enjoys in the trademark, such as: copyright, patent right, domain name, etc.
- Other evidence that may prove that use of the trademark and the quoted trademark will not cause any confusion in the market.
Time Frame - (Trademarks Protecting your Intellectual Property)
The total procedure time depends on the project scope and national holidays, but the average project takes 18 months from the time the application is submitted to the point where the IP is protected.
- Trademark acceptance notice will be issued about two months from submission of application.
- A public announcement of the trademark will be made.
- If no objection is posted within 6 months, the official license will be issued about three months later.
How long are Trademarks valid in China once registered?
Once granted, a TM in China need not be renewed for 10 years.
Conclusion:
Lawyers and businesspeople lacking China experience often give the following bad advice:
- “A hometown lawyer can sort out your China TM’s.”
- “Use WIPO and you are safe.”
- “Foreigners can’t get a fair shake in a Chinese court so why bother registering IP?”
- “You were the first to market, so you have the high ground.”
- “It costs a lot of money to register a TM in China.”
- “You need to register your logo, slogan and brand in 3 separate applications.”
Hopefully, this article has given you insight into why each of those statements are not just inaccurate, but down right dangerous, when it comes to doing business in China.
Let me close by offering two VERY Important aspects to consider if you are thinking about protecting your TM in China:
ONE: As China is a “first to register” system, it’s important to be the first person to start the process!
TWO: Once you have your TM registered, you need to use it. Here is how to provide you are using your TM in China and avoid exposure to cancellation for non-use.
Regardless if you use the firm I am associated with, or other lawyers in China, if you are serious about doing business in China and assuming you have IP worth protecting, then take effort to get your IP registered in China. If you do that, you will be well-positioned to defend and enforce your Trademarks when the inevitable day comes that you face counterfeits and knockoffs.
Additional Resources
More whitepapers & video tutorials on related subjects can be found https://www.asiabridgelaw.com/resources/
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ABL Blog: Sr. Editor and Primary Content Creator: Michael J. Bellamy
Originally from Upstate New York, Mike moved to Asia in 1993 and is a China business advisor to both Fortune 500 companies and small businesses. Recognized as an expert on doing business in China, he has been interviewed by WSJ, CNBC, FT & Bloomberg.
A featured presenter on China issues at seminars, trade shows and corporate events across the globe.
Learn more about Mike and AsiaBridge Law at
https://www.asiabridgelaw.com/business-advisory-services/
Mike is the author of “The Essential Reference Guide to China Sourcing”
(available on Amazon).