Trademark Protection Strategy in China: What You Should Know

2016-08-26
BORSAM IP
BORSAM IP  ————————————————
Trademark Protection Strategy in China: What You Should Know
 
A trademark is a recognizable sign, design or expression identifying products or services of a particular source from those of others. Thetrademark owner can be an individual, business organization, or any legal entity. A recognisable trademark brings many benefits to the owner when used in commerce. However alongside those benefits comes some downsides, namely trademark infringement; this occurs more and more as the trademark gains recognition and includes situations of malicious registration action, cybersquatting and counterfeiting.
 
Typical Situations Encountered:

There are 4 main forms of action that you generally encounter when dealing with malicious registration:

 
1. A rush to register the trademark in question in order to capture the Chinese market. This is then followed by a threat to the company, and a request to be chosen as the trademark holders’ exclusive partner in China. This often happens among agents, distribution partners or former employees who know more than average about the trademark’s history or future promotional and growth plans.
 
2. The copying, imitation or translation of the main part of another’s well known, registered trademark and the application of it to different or dissimilar goods in order to promote their own product by virtue of the well-known trademark’s popularity.
 
3. Registration of an enterprise’s name that partially or wholly contains the main word or part of another’s registered trademark and using it on the same or similar products.
 
4. Registration of a domain name that is identical or partially/wholly includes the main word of another’s registered trademark, and to carry on some related trading practices under this domain name.
 
Normally, in response to the above-mentioned four infringement actions, we would take measures to prevent said infringement by filing an opposition application before the CTMO during the infringing trademarks’ application, or to file a trademark dispute application or cancellation application with the TRAB after the trademark in question has been granted.
 
While the aforementioned situations may unfortunately be inevitable at some point for most entities that have a well known trademark, there are a few ways in which the trademarks can be positively protected and to promote the chance of success when applying for remedies.
 
Possible measures to strengthen the effectiveness of related remedies
 
China obeys the principle of “first to file” rather than “first to use” for trademark applications. That is, regardless of how early you used the trademark, there is still the possibility of losing the rights to it in China. If you have already widely used the trademark and well protected the evidence of use materials, you will be better positioned to argue that the trademark rights belong to you. If you cannot prove with evidence that you have been widely and continuously using the trademark for years, and have gained popularity as a result of such use, then the officials are much less likely to support any claim of prior use..
 
 
In such situations, you must be aware when preserving evidential material: 

1. For the originality of the trademark the original logo design dated would be useful. If possible, we highly suggest making a copyright recordation of the said original logo/drawing before it becomes public/official.
 
2. Regarding prior applicants – If somebody is an agent, distributor or former employee ect or you consider they have a relationship with the company, any communication between them and yourself is strong evidence verifying alleged malice on the part of the prior applicant. Keep a copy in case it becomes necessary.
 
3. Authenticity and legality are the basic requirements that evidence must meet. Apart from these two points, if the evidence can be linked in a chain, then the evidential power of such evidence will be much higher. We would advise you to save all relevant and related documents or forms of evidence that were produced during you actions promoting the trademark in question. Doing this as thoroughly as possible will greatly assist your cause, and help to build a more complete chain of evidence system. Those documents may contain the brochures of your product, the magazines you appeared in, and the exhibitions you attended and so on.
 
 
What evidentiary materials will support the legal action of potential trademark infringement?
 
1. Certified copyright of the trademark in question
 
2. The meaning of the copyright
 
3. The copy of certificate of patent of the products
 
4. Information regarding the use of the subject trademark worldwide, particularly in China (proof including materials which can show first use, scope and the most recent time of using the trademark)
 
5. Any advertising that has occurred – TV, radio, newspaper titles/magazines
 
6. Introduction from the applicant
 
7. Any media reports regarding the subject trademark and the applicant
 
8. Evidence (eg invoices, receipts) of amounts spent on promoting the goods and services
 
9. Distribution channels of the goods and the financial situations such as a copy of the contracts signed between an applicant and distributor, or sales invoices
 
10. Pictures of a franchise house or flagship store
 
11. Certification of registration in other countries
 
12. Other evidence certifying that the mark has a reputation worldwide, particularly in China e.g. any exhibitions it has participated in, certificates of honor/recognition ect…
 
Generally speaking, the best protection strategy regarding trademarks is to start from the very beginning. However this is not always easy, and sometimes not always possible. Anything you can do to make sure you can gain as much protection as possible.