Whether you trade in China or do not, China cannot be ignored, as it is likely that the products you sell and are supplied originate from China. As a result, it is important to have a trade mark protection strategy for China and for China to be considered when operating your business.
Why does this matter?
So-called ‘brand high-jacking’ in China is not an isolated phenomenon. Numerous companies and individuals have become the victim of third parties registering their brands, thus preventing the use of their trade marks in China and potentially stopping the supply of branded product from China to the United Kingdom, even if you do not sell your product in China. Although Chinese trade mark law has improved over the years to allow for the challenge of these so-called ‘bad faith’ registrations, the procedure to reclaim them is not straightforward and involves a cost.
Therefore, timing is everything. To secure your brand, you really need to register it in China. China operates a first to file system, so whoever gets their trade mark application in first, usually gets the rights. Therefore, it is strongly advisable to file trade mark applications in China, before you enter the market there and before you enter into supply agreements with Chinese suppliers.
Defensive trade mark registrations can be secured even if you do not trade in China. However, for so-called OEMs (original equipment manufacturers) these registrations can become vulnerable to non-use attack after three years, as in order to maintain a trade mark registration it must be used in China and there is debate over whether simply manufacturing products in China, which are not sold there is use. Different courts in China have come to different conclusions.
What to file?
Next to consider before filing is the language. Do you want to cover your trade mark in Latin characters only, or file in Chinese characters too? How will your brand be referred to my Chinese consumers? If you opt for just the Latin script version, you may find that your brand adopts its own local identity which may not be quite in line with your brand image and potentially could be high-jacked by another. Further, if you only proceed with the Latin characters it can be very difficult to prevent a third party from registering the transliteration or literal translation in Chinese characters of your brand.
Goods and services coverage
In addition to the trade mark, you will also need to consider the goods and services to cover under the trade mark application. Most countries adhere to the Nice Classification system which groups products and services into 45 different categories, but China goes one step further and operates a sub-class system too. Each product that is covered is classified into a subclass, which is used to determine whether goods or services are similar. If items fall into different sub-classes, they are generally deemed dissimilar. For example, shoes and hats both fall into Class 25, but in China they fall into separate subclasses, so are potentially considered as different goods. Therefore, it is a good idea to consider all related goods or services and what sub-classes they may fall into, to ensure you are well protected.
Keep an eye on the register
If you have trade mark registrations, anywhere, it is a good idea to have a trade mark watching service. This will notify you of application to register identical and similar trade marks, which may be too close for comfort to your brand. Having a worldwide watching service will pick up newly filed applications in any country and will give you the opportunity to challenge applications before they progress.
Once you have your registrations in place, it is always a good idea to keep copies of evidence showing you have used your trade mark. This is essential if your registration is ever challenged or you need to challenge a third party. Evidence is best dated and showing the mark in use with the products or services for which it is registered.
About the Author – Rachel Platts
Rachel is a part-qualified trade mark attorney at HGF Limited and advises on the clearance of brands and filing new trade mark and design applications. Rachel also advises on the management of trade mark portfolios, filing and prosecuting trade mark oppositions and cancellation actions both at the UK and EU trade mark offices.
Company website: http://www.hgf.com/
Phone number: 0161 247 4900
New business enquiry email: firstname.lastname@example.org
April 10th, 2018