Trademark Registration in China, Why a Must and How to

 Trademark is not only a sign that distinguishes goods or services, but also plays the functions of quality assurance, advertising, recognition, goodwill accumulation and so on. It is a huge intangible asset. The protection of trademarks is the maintenance and appreciation of intangible assets.
 
Trademark registration is the premise for trademark to be protected by law and the legal basis for determining the exclusive right of trademark. This means that foreign trademark brands must register their trademarks in China if they want to seek trademark protection in China.
 

Some might argue that my brands are not famous in China, not really need the trademark protection. As long as I can make the sale, I don’t really think there is need to get registration. What about those products that are already sold in China? Without a trademark registration, are there any bad consequences? What impact will it have on brand agents and overseas brand owners?
 
According to the provisions of Articles 13 and 31 of the Trademark Law, if an application for the registration of a trademark for the same or similar goods is a reproduction, imitation or translation of a well-known trademarknot registered in China by others, which is easy to cause confusion, it shall not be registered and its application shall be prohibited, and no improper means shall be used to preempt the registration of a trademark that has been applied by others and has a certain impact.

 
For a registered trademark obtained in violation of the above two circumstances, the trademark owner or interested party may request to revoke the registered trademark within five years from the date of trademark registration. For malicious registration, the owner of a well-known trademark is not subject to the five-year time limit.
 
The trademark of the brand goods represented by the party concerned does not belong to a well-known trademark. If someone maliciously scrambles to register, then as an interested party, he can apply for the cancellation of the registered trademark.
 
In addition, the trademark law also stipulates an exemption clause for the infringement liability of selling goods infringing the registered trademark right. If he does not know that the goods he sells are infringing goods, he will not bear any infringement liability if he can prove the legitimate source of the goods he sells.
 

To sum up, if the trademark has not been registered in China so far, there will be no legal problems for its sales agents and distributors to sell in China. However, once someone else scrambles to register that particular trademark, the entrusted sales agents and distributors also have the right to request the cancellation of the registered trademark within a certain period of time. 
 
However, in order to better protect the interests of the trademark owner and its sales agents in China and avoid possible legal disputes in the future, it is highly recommended that the sales agents communicate with the foreign brand owner and register the trademark as soon as possible. Because this type of malicious registration happens, and some people do that for a living, to sell the register one to the original owner, just because they do the math constantly knowing that it would cost you more to go through all the legal process and hiring lawyers to get the trademark back.  
 

In addition, because the goods are imported with original packaging, and the original packaging is marked by a registered trademark. When selling in China, adding the Chinese translated signs, and the sales agent should inquire whether the Chinese signs can be used. Because trademarks, like patents, are regional, even if they are registered abroad, they are not protected in China. Therefore, according to the provisions of the trademark law, it is not recommended to use logos before they are registered in China.
 
To sum up, you can see the law is still protecting the right over malicious registration, yet the paperwork and legal process can be long and expensive. To avoid future dispute, and protect the right of your sales agent and distributors, as well as to demonstrate faith and long tern development plan in the market, getting the trademark registration can be a fundamental step to persuade future business partners.
 
What are the conditions for foreigners to apply for trademarks in China?
 

Article 18 of the <Trademark Law> stipulates that foreigners or foreign enterprises applying for trademark registration and handling other trademark matters in China should entrust an organization with trademark agency qualification recognized by the state to act as an agent. The article highlighted the mandatory agency requirementsfor foreigners or foreign enterprises to apply for trademark registration in China:
 
First, foreigners or foreign enterprises must entrust Chinese trademark agency organizations to apply for trademark registration in China, while Chinese natural persons, legal persons or other organizations can apply for trademark registration through agents or directly apply to the Trademark Office; 
 
Second, foreigners and foreign enterprises should entrust organizations with trademark agency qualifications recognized by the state as agents, and other agency organizations have no right to handle trademark registration applications or other trademark matters on their behalf.

 
The specific procedures are as follows:
 
(1) Send a copy of the power of attorney of the agent. The power of attorney should fill in the name, address, nationality of the principal and the trademark name applied for registration. The notarization and certification procedures of the trademark power of attorney of foreigners or foreign enterprises and related supporting documents should be handled in accordance with the principle of reciprocity.
 
(2) Send a trademark registration application, which is filled in by the entrusted agency.
 
(3)Submit a trademark pattern, and a colored pattern and a black-and-white pattern of the designated color;
 
(4) Copy of applicant's ID card. If the applicant is a legal person or other organization, a copy of the registration certificate of the region or country to which he belongs shall be submitted. The copies of the registration certificates of the offices and permanent representative offices of foreign enterprises in China cannot be used as copies of identity documents. If the above documents are in a foreign language, a Chinese translation shall be attached; if it is not attached, the application is invalid.
 

If the applicant is a natural person and applies for it by himself, he / she should submit a copy of his / her passport and the "alien permanent residence permit", "Alien Residence Permit" or "Alien Residence Permit" issued by the public security department and within the period of validity (more than one year).
 
(5)If the certificates, supporting documents and evidentiary materials submitted by the applicant are in a foreign language, a Chinese translation shall be attached; If it is not attached, it shall be deemed that the certificate, supporting documents or evidentiary materials have not been submitted.
 
(6)After paying the relevant fees, the agent submits the relevant application materials to the Trademark Office for application.
 

 
For trademark registration in China, it is recommended to make preparations first, including trademark inquiry, application materials, trademark drawings, etc. if you are not sure whether the trademark can be registered, you can contact us for free consultation, all at great value. 
 

Shanghai Wukong Integration (WKI) Center

上海唯氪市场营销中心

+86 574 27721008
lily.yang@wkichina.cn