As China becomes one of the leading trade market in the world, more and more manufactures and enterprises come to China to seek for possible share of the market here. Successful companies are likely to find their trademark being infringed in China at some point in time, whether they are physically present in China or not. The fact that you are manufacturing your product in China just for export does not in any way minimize the need for you to protect your trademark. Once someone registers "your" trademark in China, they have the power to stop your goods at the border and prevent them from leaving China.
While there is no magic recipe that guarantees full protection, companies should take all legal and practical measures available in China to reduce risks, starting of course by having their rights registered. The reality is that many foreign companies fail to register their trademarks in China and thus have no real right to complain about any "infringement" there. To expect protection, foreign companies must register their trademarks in China and the prudent company does this before going in.
The Chinese Trademark Law provides for a trademark registration system, which sets out the legal foundation for trademark protection. As a prudent first step, companies should hire a lawyer with extensive experience regarding the Chinese trademark system to determine whether their trademarks can be legally registered in China. Since China has a centralized registration system, the assessment and registration process is fairly easy and straightforward.
It is important to note that China uses the “first-to-file” system, meaning that companies may lose legal protection in China if a similar mark has already been registered in China. China is a member of the Paris Convention and WTO, so make sure you file in China within six months of registration of the same mark at home if you want to keep the original application date!
No one can deny the vital role played by trademarks in ensuring the smooth working of international trade. With the globalization of business and commerce and numerous firms competing with each other in the market, trademarks have come to play an even more critical role.
No manufacturer or company would want another to reap the benefits of their strenuous efforts and hard work or to spoil their brand with counterfeit products. Hence, there is requirement for a legal policy to apply to all individual acts piracy and counterfeiting and secure your products from the unscrupulous individuals, who might want to take benefit of your sincere efforts.
Luckily, Chinese government agencies have worked actively over the past years to bring legislation up to international standard. This is particularly true for intellectual property rights, where trademark, patent and copyright laws and implementing regulations have all undergone a radical overhaul in 2000-2001. A further major trademark law reform is also in progress.
A registered trademark in China provides the owner with the legal sanction for prosecuting any infringer of what particular trademark as it validates the ownership of the manufacturer over the concerned intellectual property. This is quite crucial for right working of any excellent commercial system as it enables the manufacturer to profit from its sincere efforts as well as its investments, and saves its reputation from being marred by brands of poor quality. For the legal recognition of the brand name, the trademark needs to be properly registered with the trademarks and patents authority in the region. A duly registered trademark acts as a notice of its certification by law, thereby preventing any dishonest individuals or companies from making use of it as it is or in any other form that may bear a close similarity such that it can be confused with the original mark.
The first thing required for successful registration of a trademark involves a basic check for the availability of the chosen mark. You should undertake a comprehensive search for resembling trademarks duly registered by other firms to find out whether your trademark will be unique. The database maintained by the State Administration of Industry and Commerce (SAIC)/ Trademark Office (CTMO) can help you find out this information.
Next you have to collect the application form and fill in the necessary information which includes the name of firm, registered office, nature of products or services provided and other such details. Trademark applications that pass a preliminary screening are published by the Trademark Office and subject to a three month period for objection. If there are no objections within this three month period, or if the Chinese Trademark Office rejects the objections as frivolous, the trademark is registered. If the Chinese Trademark Office supports an objection, it will deny the application. Denied applications may be appealed to the State Administration of Industry and Commerce Trademark Review & Approval Board and then to the People's Court. Based on our experience, objections to trademarks are rare.
After you have completed these formalities and get your trademark registered, the CTMO will issue a certificate that will provide you with legal rights over your trademark for ten years, which is renewal able, so that you can successfully protect your trademark and even prosecute infringers.
A Chinese trademark gives foreign companies a surprising amount of protection in China. If a foreign company learns that its trademark is being infringed in China, it has a number of actions available to it.
We usually advise our clients to pursue a multi-pronged approach to protect an infringed upon trademark and to pursue the infringer. The foreign trademark owner should usually file a lawsuit against the infringer, seeking damages and an injunction stopping the infringer from continuing to sell the infringing goods. The Chinese courts are actually quite willing to enforce China's trademark laws, even for foreign companies. Trademark infringement is a crime in China. For serious cases of infringement, a complaint to the office of the public prosecutor can often result in a criminal prosecution against the infringer. The Chinese police will close the offending operation and seize the counterfeit goods. The courts are authorized to impose both fines and imprisonment. Finally, if the counterfeit goods are destined for export, a notice to the Chinese customs authorities will prevent export of the counterfeit goods.