Is Registering Your Trademark in China All the time Mandatory?

I spoke with a brand new consumer yesterday relating to the significance of his firm acquiring logos in China. On the finish of the dialog, the consumer was so “psyched” about getting the logos, he requested if there are ever occasions an organization does not have to register its model identify as a trademark in China. Although had by no means been requested that query, I used to be capable of give you a couple of examples.

Exceptions to the Rule: When a China Trademark Would possibly Not Be Important

Beneath I present examples of when it would possibly make sense for an organization to not want a trademark in China. If your organization doesn’t clearly come inside one of many causes under, I might recommend you run (not stroll) to get your brand-name (and maybe your organization identify and emblem as properly) registered as a trademark in China.

1. Your organization has nothing to do with China and no intention of ever having something to do with China. This one in all probability appears apparent, however a few times a yr I inform somebody who has been emailed relating to how somebody is in search of to register the corporate’s model identify as a trademark in China. The final one I had like this was from a Midwestern dairy firm. After I realized what this enterprise did — it raised and milked cows and bought the milk in a couple of U.S. states — and confirmed that it will by no means be doing enterprise in or with China, I informed them they may simply ignore the e-mail.

2. You possibly can’t afford a China trademark and each your IP dangers and gross sales in China are negligible. This cause is never justified, since not registering your trademark in China permits another person to legally declare your model identify as their very own, thereby prohibiting you from utilizing it. Should you lack the sources to safe a trademark on your model in China, it’s normally higher to remain out of China totally. Keep in mind, your model identify might evolve into your most useful asset.

Nonetheless, for small corporations working in lots of international locations, it will not be doable to register a trademark in every one. These corporations should prioritize the international locations that considerably affect their enterprise, whereas frequently assessing whether or not these priorities have shifted. Although it could proper now be acceptable to not register your trademark in China as a consequence of meager annual gross sales there, it’s essential to control your China gross sales in case the state of affairs adjustments considerably sooner or later. See Managing an Worldwide Trademark Portfolio. Keep in mind, avoiding trademark registration can depart your model weak to authorized claims from others.

3. You’re detached about others utilizing your model with out your authorization. This might make sense for sure enterprise fashions, but it surely’s usually not advisable in international locations like China that comply with the first-to-file rule. In such international locations, together with China, anybody who first registers “your model” can use it and forestall you from utilizing it. If one other entity efficiently registers the Chinese language trademark on your model, they may have unique rights to “your model” and may block you from utilizing it totally in China, even for export items manufactured there.

4. Maintaining your services or products confidential is essential. I’ve had just one consumer for which this made sense. This was a well known and extremely regarded firm that was planning to begin promoting one among its merchandise in China and didn’t need its rivals to know this earlier than it went to market with this product. It selected to delay trademark registration to keep away from an early reveal. This made me very nervous as a result of I used to be frightened phrase would get out about my consumer and somebody would register its product identify within the meantime, and it will lose it. This was a few years in the past and I’m undecided I might deal with the stress of one other one.

5. Your organization doesn’t have a model identify to defend. I generally see this with corporations that take care of commodities which are bought with none distinctive packaging or model markers from one nation to a different. In such situations, securing a trademark within the nation the place the model identify isn’t utilized isn’t needed.

Likewise, when you manufacture a product in a rustic, together with China, however don’t apply your model identify to that product till it reaches its gross sales vacation spot, you in all probability don’t have to register a trademark in China. Should you’re not utilizing a trademark in China, it’s not possible to infringe on another person’s.

6. Your trademark is not going to be accepted for China trademark registration. China, like most international locations, doesn’t allow generic trademarks, and we’ve had a number of shoppers whose product names had been “too generic” to safe China trademark registration. China additionally doesn’t allow registering a geographic location as a trademark. There is no such thing as a means it is possible for you to to register “New York” as a trademark in China (or practically another nation as properly), however our attorneys have been capable of safe geographic logos in China for lesser-known areas that the China trademark workplace didn’t know had been areas. In case your model identify is a location, you need to resolve whether or not to strive for the trademark or change the identify.

Debunking Widespread Misconceptions About China Trademark Registration

Our agency’s worldwide trademark attorneys often hear two flawed arguments in opposition to registering a trademark out of the country. These are sometimes introduced to us by an organization that didn’t get a trademark and simply realized {that a} Chinese language firm registered their trademark.

The most typical flawed argument is that there’s no want for a China trademark for corporations which have their merchandise manufactured in China, however don’t promote in China. Unsuitable, improper, a thousand occasions improper. The truth that you manufacture your product in China solely for export does not diminish your want to guard your trademark there. Ought to another person safe “your” trademark in China, it will likely be capable of cease your items from leaving China – a state of affairs that occurs often. See Manufacturing in China: Trademark Registration Ought to be the First Factor You Do .

We frequently hear one other flawed argument: “Our model is legendary, so we don’t have to register it in China.” Should you actually consider this to be true relating to your model, I might urge you to learn China’s Effectively-Identified Emblems: A Primer after which inform me that you’re so assured of this that you’re prepared to threat costly litigation to show it. Even when you consider your model is well-known in China, it’s nonetheless cheaper to take a position the minimal quantity required to register your trademark, quite than face probably exorbitant litigation prices later defending the “fame” of your model. If your organization is something apart from Coca-Cola, you need to assume your model isn’t well-known sufficient in China to have the ability to skip registering it.