Highlight: Foreign companies should ask the Chinese trademark agency to take trademark retrieval and give advice of feasibility of the trademark keyword before applying the trademark.
The most frequently consulted question by foreign companies to us is that what measures could be taken when trademark application is refused in China.
- In accordance with our experiences, it is more difficult to get the trademark that has been refused approved, however, under most circumstances, the basic success rate for trademark application can be known through the prior trademark retrieval service. For the avoidance of any influence on company’s brand strategy from application failure, alternative names or together-applied backup names are suggested to those trademarks difficult to apply.
The rejection of trademark application may cause large losses and damages to enterprises’ brand strategy. Generally, the company tends to schedule the brand strategy, including brand positioning, advertisement and protection before unveiling the product. However, it may cost 1 to 1.5 years from application to registration or rejection due to administrative refusal, which may challenge the brand strategy of the company shall the company was unprepared.
By Trademark Law of China, only the registered trademark can enjoy the exclusive protection. The company could only protect their brands by China Anti-unfair Competition Law shall the trademark registration application failed. In contrast to the Trademark Law, the protection on brands by China Anti-unfair Competition Law is comparatively weak, only covering the package and decoration of products.
The brand propaganda of companies may be trapped in dilemma with the decreased legal protection, for the counterfeit could not be effectively combat and, on the other hand, the advertisement expenses devoted may contribute to the competitors’ interests. The international leading infant formula giant Dumex and Nestle, for example, once got litigated against each other for the word and image trademark of “金盾”（Jing Dun）， and the suit made both parties’ huge market promotion payout risking failure.
We think most of the cases can be resolved by prior trademark retrieval. The retrieval can make the enterprises understand the basic direction of the application result, and regarding to the trademark of low registration rate, the similar trademarks can be applied as backup trademarks at the same time.
Our trademark retrieval services include the following three parts:
- Analysis on the cases when trademarks are prohibited to register by PRC laws.
- The retrieval for the identical or familiar trademark in application classes.
- Advices on how-to-do for clients.
You may also read BRIDGE IP COMMENTARY’s recent analysis on iMessage’s trademark application in China.
For more information of related services in China, please CLICK HERE.
Author: Mr. You Yunting, Attorney-at-law of Intellectual Property
Partner of DeBund Law Offices, Shanghai, China
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900
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Bridge IP Commentary is a website focus on the introduction of commercial laws in China, especially the intellectual property laws. Unless otherwise noted, the articles or essays on our website are all original with Mr. You Yunting owns the copyright. All news or cases referred here are from public reports, and our comments or analysis are of due diligence, neutrality and impartiality, representing our own opinions only. You may contact us shall you have any opinions or suggestions.