CHINESE TRADEMARK REGISTRATION - AN ESSENTIAL PRIMER
Though the United States media have published a number of
stories deriding China's intellectual property protection, those
articles nearly always neglect to mention that in most instances
involving trademarks, the fault lies with the foreign company,
not with Chinese enforcement. The reality is that many foreign
companies fail to register their trademarks in China and thus
have no real right to complain about any "infringement" there.
To expect protection, foreign companies must register their
trademarks in China and the prudent company does this before
going in. There are actually a number of people in China who
make a living by usurping foreign trademarks and then selling a
license to that trademark to the original license holder. Once
one comes to grip with the fact that China, like most of the
rest of the world, is a "first to file" country, one can
understand how easy this usurpation is, and also how easy it is
to prevent it. The fact that you are manufacturing your product
in China just for export does not in any way minimize the need
for you to protect your trademark. Once someone registers "your"
trademark in China, they have the power to stop your goods at
the border and prevent them from leaving China. The key to
protecting a trademark in China is actually very simple:
register it in China. China's trademark requirements are
actually quite similar to those in most other countries. The
trademark must not conflict with an existing Chinese trademark
and it must be distinctive. China allows for registration of all
marks for goods, services, collective marks and certification
marks. China's Trademark Office maintains a centralized database
of all registered and applied-for trademarks. Trademark
applications that pass a preliminary screening are published by
the Trademark Office and subject to a three month period for
objection. If there are no objections within this three month
period, or if the Chinese Trademark Office rejects the
objections as frivolous, the trademark is registered. If the
Chinese Trademark Office supports an objection, it will deny the
application. Denied applications may be appealed to the State
Administration of Industry and Commerce Trademark Review &
Approval Board and then to the People's Court. Based on our
experience, objections to trademarks are rare. A Chinese
trademark gives foreign companies a surprising amount of
protection in China. If a foreign company learns that its
trademark is being infringed in China, it has a number of
actions available to it. We usually advise our clients to pursue
a multi-pronged approach to protect an infringed upon trademark
and to pursue the infringer. The foreign trademark owner should
usually file a lawsuit against the infringer, seeking damages
and an injunction stopping the infringer from continuing to sell
the infringing goods. The Chinese courts in the more
commercialized regions are actually quite willing to enforce
China's trademark laws, even for foreign companies. Trademark
infringement is a crime in China. For serious cases of
infringement, a complaint to the office of the public prosecutor
can often result in a criminal prosecution against the
infringer. The Chinese police will close the offending operation
and seize the counterfeit goods. The courts are authorized to
impose both fines and imprisonment. Finally, if the counterfeit
goods are destined for export, a notice to the Chinese customs
authorities will prevent export of the counterfeit goods.
About the author:
Steve Dickinson is an attorney with the international law firm
of Harris &Moure (http://www.harrismoure.com). Steve is based in
China, where he focuses on assisting small and medium sized
businesses. Steve is fluent in Mandarin Chinese and has been
working on China matters for more than twenty years. He can be
reached at firm@harrismoure.com.
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