China: a trade mark guide

This guide will tell you everything you need to know about trade marks in China, from registration to enforcement.

China has seen a rapid increase in its economic position, which has aided the growth of IP. Recent reforms to the Chinese IP laws have seen it draw aspects from the UK system to build on its own.

The Chinese system has similarities to the UK in the sense that trade mark registration is there to protect signs, shapes, logos and colours.

It is also the same in the fact that protection in a registered trade mark lasts for an initial ten years and can be renewed indefinitely every ten years after that.

However, the system itself does differ from the UK in regards to time periods and points of contact.

Registration

There are two ways in which you can register a trade mark in China.

The first way is through the Chinese domestic system which can take anything between two and four years.

The second way is through the Madrid Protocol, through which a foreign business can obtain a registration in approximately 18 months.

Of course, it seems the best course of action to register the mark is through the Madrid System; however this is a very expensive course of action.

It is always best to seek expert advice before making any decisions. The Trademarkroom has extensive expertise in registering international trade marks and can give you any guidance you may need to make the best decision for your business and your budget.

Enforcement

There are a number of options when looking to enforce you IP rights in China, with differing time scales and costs.

It is always recommended to first send a ‘cease and desist’ letter if you find someone is using your trade mark or one substantially similar without your permission.

In some cases this will be enough to stop the infringing parties’ actions and therefore can be a quick and cost effective way to put an end to the problem.

However, when this is not successful there are a number of options. These include administrative action and civil litigation.

Administrative action involves filing a complaint with the local office administrative office. In normal trade mark cases, this can be relatively straightforward especially if it is clear that the infringement has taken place. However, the more complicated the case, the less clear the administrative authorities powers are.

If the infringement is of a complicated nature, your best option may be to take civil litigation. This would involve starting an action in the IP tribunals. This can have a positive impact on the case as it can be seen as a clear deterrent to future infringers as well as the potential outcome of a damage award. However the big downside is the timescale. A case through civil litigation can take around 12 months, which of course can be costly.

There has been a rise in illegal counterfeiting with the rise of IP rights in China in recent years, therefore it is important that you are aware of this and are ready to take action.

For more information and guidance, contact The Trademarkroom today!

By Ellis Sweetenham