Success in intellectual property protection in China lies in the hands of those who can see the big picture, and who take action now to lay the foundations for success in the future. Inevitably, there are weaknesses in any set of laws and regulations. However, those who can access and exploit the strengths that also exist in any system will find themselves on a more sturdy foundation for enforcement.
Three characteristics of protecting trademark rights in China are the comparatively long trademark registration process, extended subclass practice for trademarks, and the importance of creating a Chinese version of a foreign mark. Local and foreign enterprises alike can ensure a good foundation for trademark protection and enforcement through comprehensively addressing these three characteristics.
The trademark registration process in China has three stages. The first stage of registration is the application review process, which currently lasts an average of two to three years. Once an application has been approved, it is published in the China Trademark Gazette and enters the second stage, provisional registration. The provisional registration period lasts three months and is a window for opposition proceedings. If the trademark is not opposed within the three month window, it matures into registration.
This is what is typically known as a straightforward application process, and is the first foundation of trademark establishment. However, addressing the complexities of registration that may sometimes arise can prove to be difficult. One such complexity is China’s characteristic extended subclass practice.
Extended subclass practice
China uses and honours the Nice Agreement Concerning the International Classification of Goods and Services for the purposes of the Registration of Marks (the Nice Agreement), and the International Classification system. However, one expanded characteristic of China’s trademark classification regime is to break down the 45 classes of trademark listed in the Nice Agreement into specific subclasses, and to use these subclasses to determine whether goods or services are identical, similar, or dissimilar.
In order to fully address and understand this issue, an in-depth study of the current edition of the Distinguishing Similar Goods and Services Manual is crucial. This manual clearly outlines the different practices by which the China Trademark Office (CTMO) distinguishes whether the subclass specified in a trademark application renders the trademark identical, similar or dissimilar to a previously registered trademark. For example, in current practice, if two trademarks are similar in appearance and pronunciation, but registered in different subclasses, they are likely to be deemed dissimilar.
Thus, classes that are categorized into many subclasses can pose the biggest obstacle, such as classes 7 and 9, which have a comparatively large amount of subclasses.
However, in certain cases, cross-subclass trademarks may also be deemed as similar. For example, an examiner at the CTMO may deem subclass 1402 (jewellery cases) and 1403 (jewellery) as similar, but subclass 1402 (jewellery cases) and 1404 (watches) as dissimilar.
Whether a trademark is judged identical, similar, or dissimilar in appearance and/or pronunciation to an existing mark is at the discretion of the examiner who is handling the case. Therefore, it is important to be well acquainted with the specific nature of classification for every filing, and to understand the role that the discretion of each individual examiner plays in distinguishing between similar and dissimilar goods or services. The discretion of an examiner or a consumer may also be greatly influenced by the prominent language used in a trademark. Therefore, creating a Chinese version of a foreign trademark is extremely important.
Dual language trademarks
Establishing a Chinese version of a foreign mark is important to help CTMO examiners and consumers to understand the link between a trademark in a foreign language and its local equivalent. Without creating a Chinese version of a foreign mark, an owner of a wellknown wellknown foreign trademark takes the risk that anybody may register the Chinese equivalent of its trademark and ‘freely ride’ off its reputation. This often happens, and can lead to very complex legal proceedings.
In both administrative and judicial proceedings, the place where the evidence of a well-known trademark is formed is of extreme importance. Under current practice, persuasive evidence in a legal proceeding must be formed in China, and evidence formed outside of China is considered as supplementary. Some examples of this are the popularity of the terms “Baoma” and “Kekou Kele”, which are the Chinese names of BMW and Coca-cola, respectively. The Chinese version of these trademarks is better known in China than their foreign equivalents.
Even though creating a dual language trademark may currently be more relevant to foreign enterprises than local, local enterprises can also greatly benefit from the same principle in their preparation to expand their business overseas. Many times it may be fundamental knowledge and tactics that are most easily overlooked.
In creating a comprehensive strategy and enjoying the benefits of the PRC Trademark Law, it is important continually to reassess the foundations of your trademarks in China. Through continual reassessment, and careful examination of how the written law translates into actual practice, a company can enjoy long term success and avoid the unwarranted complexities of later protection and enforcement actions.
The trademark registration process, the subclass practice, and the importance of dual language trademarks are just three sections of a much larger foundation for the establishment of trademark protection in China. But establishment is the foundation of later protection and enforcement.
Adam Kryder is an internal consultant at Chang Tsi & Partners. He specializes in client relations and cross-cultural communication
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