Wang Jing & GH Law Firm

Intellectual Property insights: TRADEMARK protection in the P.R.C., the practical approach.

With decades of legal practice in the P.R.C. and hundreds of IP related cases every year, our Law Firm have been involved throughout the years in some of the PRC’s most challenging and most cutting-edge IP cases ever. Our IP legal knowledge grew solid through daily practice and has now reached the point where we are able to share with you the most effective and practically savvy suggestions on how to protect your trademark in the P.R.C. Lawyer Eloisa Hu, senior associate with Foreign-related Legal Service Dpt. of Wang Jing & GH Law Firm will walk you through such tools and offer readers with her expertise and suggestions on this very hot, much worth it topic.

As the revision of Trademark Law in 2019, we can see that the Chinese government is putting strong hand on the combat against trademark squatting and hoarding. However, new challenges have presented as the trademark squatters are trying to “out smart” the law. In our daily practice, we have dealt with cases with the following situations:

Squatters are no longer limited to companies who had previous commercial relationship with the real trademark holder, which makes it harder for real trademark holder to use the relevant legal ground to file for invalidation;

Squatters use the authentic trademark as an element of the squatting trademark and add something else, which makes it harder for the real trademark holder to explain and prove the similarity;

Squatters use the company name, not the trademark of the real trademark holder, as the squatting trademark, which makes it harder for the real trademark holder to explain and prove the infringement.

In order for real trademark holders, especially foreign companies, to better protect their interests in the P.R.C., we carved the following for your consideration:

Have professionals in The P.R.C, to keep constant monitoring on any potential squatting and take early actions

It’s important to take early action and stop the squatting in the early stage. Keeping constant monitoring can help you, the real trademark holders, to spot the potential squatting and intervene as early as in the publication period. The opposition procedure may take 9-12 months after CNIPA accepted the case and during all this time, the squatter cannot use the squatting trademark, not legally. In addition, if you find out the squatting trademark only after it is registered, then you have to wait for 3 years after the registration in order to use the legal instrument of “3-year no use cancellation” against the squatter.

Register copyright of the trademark logo in The P.R.C,

If you don’t have plan to register your trademark in The P.R.C, but want to prevent others from copying your trademark, an alternative is to register copyright of your logo in The P.R.C,, or at least keep very clear evidence of the creation process of your logo in order to prove your copyright. This can be helpful especially when your logo is used as part of the squatting trademark, or the squatting trademark is registered for no more than 3-years. However, be noted that this copyright registration is not as strong as trademark registration, since the former is more as a declaration, which can be overthrown by proof saying otherwise, whereas the latter is a certificate of ownership.

Collect evidence of your activities in The P.R.C,

If you are active in The P.R.C, in the sectoral exhibitions, trade fairs and other commercial events, make sure you collect all the evidence of the presence of your company, your products and your trademarks in these events, for example, contracts signed with the exhibition organizer for the participation, pictures of your booth, products where your trademarks can be seen clearly.

If you have your trademark registered in The P.R.C,, remember to renew it before expiration

Some of the foreign companies chose to apply for the trademark registration in The P.R.C, through Madrid Protocol. However, since they don’t really have much activities in The P.R.C,, over the time they forget this trademark and after ten years it’s invalid due to lack of renewal, which gives the perfect chance for squatters, even though in this case, the trademark law provide one year window before similar registration can be filed again.

If you have your trademark registered in The P.R.C,, use it and collect evidence of use.

As mentioned before, if you have trademark registered in The P.R.C,, you should use it, at least once or twice in any consecutive 3 years, to avoid being attacked under “3-year no use”. Based on Trademark Law, use of trademark includes: trademark on the product, product package, manual, quotation; trademark on commercial documents such as contract, invoice, customs declaration; trademark in advertisement of products on media, tv, publication, etc; trademark used in exhibition, trade fairs. When you use the trademark, collect the evidence of use, so in case your trademark is under attack, you can submit proper evidence to prove the use.

We would be delighted to provide you tailor made legal services to help you implement the above suggestions, and see how those could apply to your specific IP needs in the P.R.C.

Since each industry and sector have their own characteristics, the trademark strategy might vary. For more information and customized strategies to protect your trademark in The P.R.C,, please contactfornari@wjngh.cn (Italian, French, English) andeloisahu@wjngh.cn (Spanish, English, Chinese).

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