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3 Things You Need to Know Before Filing a Trademark Application in China

With the recent headlines exemplifying the ramifications of an organization’s failure to adequately protect their trademarks in China, many organizations are now scrambling to avoid similar fates. If your organization is one of those seeking to protect their intellectual property interests in China, it is time to stop, take a breath and read the remaining contents of this article. Many organizations are unfamiliar with the intricacies of Chinese trademark law and the two minutes it will take you to read this article may help your understanding. If your organization is contemplating seeking trademark protection in China, there are certain things you need to know and consider before taking on this endeavor:

1. Adequate Pre-Filing Trademark Search

Prior to filing any trademark applications in China, it makes sense to obtain and analyze a comprehensive trademark search for your marks in China. In many situations concerning United States trademark applications, the trademark search costs more than the filing due to the fact that you can typically file one trademark application and add classes to the one application (although you have to pay filing fees based on the number of classes, you will not have to pay separate preparation fees for multiple applications). With US applications, we sometimes recommend doing an informal preliminary search and filing an “intent to use” based application to save some money on the formal searches. Due to the number of trademark applications you would have to file in China to obtain similar protection (see below), the formal trademark search makes financial sense. If the search reveals that there are organizations using the same or similar trade names, you may want to make alternate plans.

2. Numerous Applications

As mentioned above, in order to adequately protect your trade name in China, multiple applications must be filed. The reason for this is twofold:

  • Translation, Dialect and Language – in many instances, the Chinese language will not have an exact translation of your English trademark. Because of this, many organizations will have to file multiple applications to cover the different variations of the Chinese interpretation of their trademarks. Similarly, due to the numerous dialects of China, you may have to file multiple applications to fully protect each variation of the trademark based on the different dialects and language issues.
  • Classes – the Chinese trademark system requires a separate trademark filing for each class of goods or services you want covered. If you use your trade names for goods in three separate classes, unlike the system used by the United States Patent and Trademark Office, where one application can be filed for all three classes of goods, the Chinese system would require you to file three separate applications.

3. Don't Go Half Way

Once you have made the decision to seek trade name protection in China, it is critical that you see it through to the fullest extent possible. Any gap in protection will be exploited. Although it is better to do something over nothing, if you fail to cover all of your bases when filing your Chinese trademark applications, you may be better off spending your money elsewhere because the false sense of security will put you in the same position as if you did not file at all.

Due to the many intricacies of Chinese trademark law and language, protecting your trade name interests in China is not easy nor cheap. Nevertheless, obtaining complete trademark protection in China could be a substantial asset for your business and could avoid the painful situation where your products are held at port and the expense of litigating a trademark dispute overseas. If you are still on the fence (or the Great Wall for that matter) as to whether or not you should seek trademark protection in China, see our other articles on the subject, contact our offices for additional information.

Brian A. Lincer

by Brian A. Lincer
Business Attorney and Intellectual Property Lawyer in New York and New Jersey

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