Nowadays the world’s most famous trademarks are worth billions of dollars. It is thought that if the Coca Cola company, ranking first on the list of well-known brands worldwide, were to be completely destroyed, it could rebuild itself in no time only by virtue of its trademark. This is the power of the trademark; therefore it is incredibly important to protect it.
The trademark law in China was adopted in 1982. On 30th of August 2013, after more than 7 years of deliberation and discussion, China’s top legislature introduced the third amendment to the Trademark Law that aims to better protect exclusive trademark rights.
What if you don’t register your trademark in China?
In the case of Hermès, the famous luxury brand with one of the most illustrious trademarks in the world, failure to register their Chinese name lost the company its Chinese trademark. In 1977 Hermès registered its English name and logo in China but failed to register its Chinese counterpart. In 1995 a Chinese clothing company named Dafeng applied to register the trademark “爱玛仕” (Aimashi) for its clothing products, which shares the same pronunciation of Hermes in Chinese. Hermes then made a claim to cancel the disputed trademark but it was rejected by the court on the basis that only the first registered trademark is protected.
A similar issue is Internet trademark infringement. In IKEA vs. CINET, the Chinese company registered the domain name www.ikea.com.cn. Initially a domain name was merely an address on the Internet; however, domain names are now increasingly related to trademarks due to the development of e-commerce. Therefore, the use of the well-known mark IKEA as a domain name takes unfair advantage of the goodwill vested in and associated with IKEA. In the end, the court ruled that CINET had violated the principles of fair competition and honest practice of trade and that the domain name www.ikea.com.cn should be suspended and cancelled.
Cases such as these make obvious the necessity for being aware of trademark protection in China; even more so as the trademark is the core element of a business. Only by paying attention to it can a fair market be ensured. Therein follow some points for consideration when dealing with trademarks in China.
i) Try to register your trademark in as many categories as you can; at the very least cover those related to your products. For example, Facebook registered a total of more than 60 trademarks in China, including social work, photo sharing, electronic magazine, and even clothing.
ii) Set up a special department or entrust a professional agency to monitor if there is any same or similar trademark on the market. Take relevant measures to avoid trademark infringement if there is.
iii) Apply for Well Known Trademark to maximize the protection of your trademark. Compared with ordinary trademarks, well-known trademarks have high visibility, high market share, and a good reputation. This is the best way to protect your trademark at present.
iv) The Trademark Law adopts a first-to-file rule for obtaining trademark rights. The first applicant to file an application for registration of a mark will pre-empt all other later applications for the same mark in the same class. If two or more applications are filed for the same mark in the same class on the same day, the trademark used first shall be accepted.
This article is intended solely for informational purposes and does not constitute legal advice. Although the information in this article was obtained from reliable official sources, no guarantee is made with regard to its accuracy and completeness. For more information please visit dandreapartners.com or WeChat: dandreapartners.
