By: Sharon Urias, Esq.
Unlike trademark law in the United States, there is no “use in commerce” requirement in China, which follows the “first to file” rule to establish priority among competing trademark owners.
For trademark owners based in the US or other countries outside China, a domestic application for trademark registration can be filed directly with the China Trademark Office (CTMO). Another option, although perhaps less desirable for various reasons (to be addressed in another blog post—stay tuned), is to use a mechanism known as the Madrid System, by which a U.S. attorney can file a trademark application seeking protection in any of the member countries through the World Intellectual Property Organization (WIPO). According to WIPO, the Madrid Union currently has 103 members, covering 119 countries. One of those countries is China.
Because China has a “first-to-file” trademark system and no use requirement to obtain registration, it is important to apply for trademark protection in China as early as possible. In addition, because registration in Roman characters does not automatically protect trademarks against the use or registration of a competing mark written in Chinese, it may be advisable to obtain registration of trademarks in Chinese characters as well.
Similar to procedures in the United States Patent and Trademark Office (USPTO), the Chinese registration process proceeds through the following stages in the CTMO:
Procedural examination of the application to verify the application is complete and the fee is filed;
Substantive examination to verify that the mark meets the legal requirements;
Publication in the official trademark gazette;
Commencement of a three-month opposition period; and
If no opposition is filed or if the opposition fails, the trademark is registered for a renewable ten-year period.
As noted, unlike the US system, to register a trademark in China, you do not need to be using the mark in commerce or have any intent to use the mark. This has led to the problem of trademark trolling . Because of this, it is highly advisable if you are a US or other foreign company conducting business—or even contemplating conducting business in China—to file for trademark registration in China as a preemptive measure to prevent others from registering your trademarks and using them in competing businesses, holding them for “ransom,” or even worse, suing you for infringing “their” trademarks. With careful planning, vigilance and diligent management of your IP portfolio, you can minimize the risks associated with conducting business in China.
*The information in this article is provided for general informational purposes only, and may not reflect the current law in your jurisdiction. No information contained in this post should be construed as legal advice from Greenspoon Marder LLP or the individual author(s), nor is it intended to be a substitute for legal counsel on any subject matter. No reader of this post should act or refrain from acting on the basis of any information included in, or accessible through, this Post without seeking the appropriate legal or other professional advice on the particular facts and circumstances at issue from a lawyer licensed in the recipient’s state, country or other appropriate licensing jurisdiction.
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