Imagine a situation: you are registering a trademark, being used by you for a long time in many countries of the world, in China and … your application is rejected because your trademark has already been registered before in China, not on your behalf. No, this is not your nightmare. This is a daily situation when speaking about the Chinese market.
Often-times a company faces a situation in China where it is no longer able to sell its goods as that is prohibited by other persons who have the prior rights to a trademark marking the goods of that company.
Such situation can be avoided if several rules are followed:
- Register your trademark in China right away
Registration must be made before you have thought of becoming involved in the Chinese market. A frequent mistake: a trademark is registered after returning from an exhibition where there were Chinese representatives, or after the negotiation of a supply contract started, and even worse, after the sale of several containers of goods in China. In this case, you can be almost completely sure that your brand will be registered by someone else.
- Register the trademark in Chinese characters
According to the statistics, 9 out of 10 Chinese persons will have your trademark pronounced in Chinese. The Chinese will even discover the meaning of your trademark in their own language and start using it. Considering this, it is necessary to register the trademark not only in Latin characters but also in Chinese hieroglyphs, which would either be a direct transliteration of your trademark or sound similarly albeit having a different meaning. It is also possible that there is a trademark in China that does neither sound similarly nor has a similar direct meaning to your Latin trademark, but the Chinese are using it. In order to find out which version in the Chinese characters would be best suited, it is advisable to consult a local marketing agency.
- Apply for a more extensive list of goods / services
The Chinese version of the Nice Classification of Goods and Services is specific – they break down all goods and services into even smaller groups. Keep that in mind and register as many subclasses as possible. It is only possible to register 10 goods are in one application for a fixed fee and an additional fee is charged for each additional item in the list.
- Defend your rights and negotiate
If your trademark has been registered by another person, look for associations. Maybe it’s your distributor, agent or one-time buyer of your goods? Or perhaps it’s a shareholder or manager of these persons? Maybe you have sent samples of the goods to this person? If the answer is yes, it is likely that your chances of challenging the previous unlawful registration of the trademark are not bad. If you fail to prove fraudulent intent of another person, the possibility of recovering your trademark by legal means would be close to zero. Then there is a possibility of negotiations. The Chinese tend to sell the registered trademarks – all you have to do is to negotiate the price.
- Protect your market with the assistance of the customs authorities
If it happens that neither legal nor negotiation measures are of any help and another person starts using your trademark in the Chinese market, protect your European market by applying for customs action. This will put on hold the goods illegally labelled with your trademark, that would be reaching the European market from China. This is especially true for small mail items.
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