WHEN to Apply for a China Trademark

Our Worldwide IP attorneys are all the time preaching how international corporations should register their emblems in China if they’ll be doing enterprise in or producing product in China (see, for instance, China Emblems — Do You Really feel Fortunate? Do You?). And usually, corporations ought to register their emblems in China now. Proper now.

China is a primary to file nation. Which means — with few exceptions — whoever recordsdata for a selected trademark in a selected class will get it. So if the title of your organization is XYZ and also you make footwear and you’ve got been manufacturing your footwear in China for the final three years and somebody registers the XYZ trademark for footwear, that different firm will get the trademark. After which, armed with the trademark, that different firm has each proper to cease your XYZ footwear from leaving China as a result of your footwear violate that different firm’s trademark.

However saying an organization should register its trademark if it will do enterprise in China does, a minimum of to a sure extent, beg the query as to when that firm ought to register the trademark. I all the time inform our purchasers and potential purchasers that they need to register their emblems immediately. My pondering on that is that in the event that they know they should register their model title or brand as a China trademark, they need to do it immediately in order to ensure no person beats them to it.

However what in case you are a international firm pondering of introducing your product into China in a few years? What do you do? Nicely in case you are a large firm with some huge cash, you go forward and register your trademark proper now. However in case you are a small firm, spending the cash now could or could not make sense. The place and the way do you draw the road? There is no such thing as a one reply right here; it’s extra a case of figuring out it once you see it.

I thought of all this just lately as a result of I acquired a name from a small firm that was referred to me by a China sourcing firm we symbolize. The China sourcing firm had the foresight to inform this different firm (let’s name it Firm A) that it wanted to register its trademark in China earlier than the sourcing firm began going out and looking for producers for Firm A’s product. However once I spoke with Firm A, it instantly turned clear to me that its funds had been very restricted and that it was uncertain if it could be capable of discover a Chinese language producer at a value that will make sense, and if it did discover that producer, whether or not its product would catch on or not.

Firm A’s not unreasonable plan was to make a restricted amount of its prodcut as a take a look at run after which, if that labored, safe financing to ramp issues up. My dialog with this firm went like this:

Firm A: Is a trademark actually essential in China?

Me: It’s essential if you wish to make sure to defend your self from somebody taking your model title from you. How necessary is your title to you? If somebody takes it, may you stamp a special title in your product for the subsequent go spherical?

Firm A: I actually like our title, however I may all the time provide you with a brand new one if that had been to occur. Do you actually assume somebody goes to register our trademark immediately in China?

Me: You simply by no means know. We’ve got seen corporations lose their model title earlier than they’ve even chosen a producer and we’ve seen corporations go years with out anybody taking their model title. Lots is determined by the trade and the model title and your success. You probably have a scorching product in a scorching trade, you might be fairly sure your model title might be taken when you don’t register it. However since your organization just isn’t identified and your product is an industrial product not but out available in the market but, you’ll be able to contemplate ready till after you see in case your product may have legs.

Firm A: I would favor to try this. Am I taking an enormous threat?

Me: I believe your dangers are fairly low, however they’re undoubtedly greater than zero. Lots is determined by whether or not the worst case state of affairs of getting to provide you with a brand new title is horrible for you or not.

You’ll by no means get me to say something apart from how necessary it’s to register your trademark in China immediately (as a result of I don’t need anybody to have the ability to blame me if “their” trademark is registered by another person), however clearly the choice on when to register is usually a bit extra sophisticated than that.