By Albert Chen
We posted to discuss what classes shall DOTA like online game to register their trademarks several days ago. In a country like China where the infringement is not rare, it’s suggested to apply the trademark in relevant classes as many as possible, and today we would like to discuss the way to make the strategy on trademark and the advantages and disadvantages of the full-class registration of trademarks.
I. The full registration of trademarks is suggested for the current condition in China
We have reported and analyzed the losses suffered by international companies as the cost for their negligence on the trademark strategy in China, among which we see the cases of HERMES, ANGRY BIRDS who pay for their carelessness over the localization of their marks and Apple who should have paid more attention to the real owner of the iPad trademark in the trademark transaction.
For these, we suggest foreign companies to make a comprehensive registration to the trademarks used in China, and there the “comprehensive” refers to 1) the registration in all 45 classes; and 2) the registration of related or similar trademarks.
It’s not difficult to understand the full-class registration, but what is the related or similar trademark?
1. Similar trademarks
Also, to take iPad trademark as the instance, similar trademarks of DOTA include aPad, bPad, cPad, etc (and actually all these similar trademarks have been squatted by others in China), and the successful risk control of the trademark is not rare in China. For the noted brand of WAHAHA (娃哈哈), marks of HAHAWA (哈哈娃) and HAWAHA (哈娃哈) were also registered at the same time, and such arrangement is proved by the practices to be meaningful. Although the mark of WAHAHA (娃哈哈) is highly reputed in China and to produce similar or identical products are not difficult after all, so far we have seen few cases of the imitation on the trademark or the free riding on it.
2. Related trademarks
The so-called related trademarks, in our view, is actually the localization of the international brands, especially those consisted by English or other Western language letters.
For this problem, on one hand, we have seen the lesson for their negligence like Apple and HERMES as discussed above, but on the other hand, FACEBOOK’s precautious plan also impresses us. Despite the giant in the social networking has not entered China yet, the retrieval of the trademark registration shows that FACEBOOK has registered the localized marks like “脸书”, “面书” （paraphrase）and “飞书博” (transliteration), involving Class 9 of software, Class 25 of clothing, Class 35 of ads, Class 36 of finance, Class 38 of telecommunication, Class 41 of education, Class 42 of computer hardware and Class 45 of social services.
As to the suggested classes to be applied for similar and related marks, we think it shall at least cover the classes directly involved by the marks, as well as those key classes for the peripheral of the marked products. Surely, it to the company’s opinion, the full-class registration could also be a proper strategy once it’s deemed necessary.
II. The main risks of full-class registration
1. Cancellation for continuously ceased using of 3 years
To the foreign companies with the game companies included, the trademark protection by full-class registration is feasible and relatively safe, which however may arouse another problem that by China Trademark Law, any trademarks could be cancelled as applied by the third party when ceased using for continuous 3 years. Of course, the cancellation decision will not be made immediately, the administrative office will demand the registered owner submit the proof of mark using, and such proofs in practices are not with a high standard, which are adequate enough to maintain the trademark right when demonstrating the past propaganda or contracts.
2. The possible obstacle of Well-known determination
In the market competition in China, the well-known trademark has been the shortcut to publicize its reputation to many companies, including international companies, and their main purpose to apply for the well-known title is to earn the trust from consumers.
But if the trademark were registered in all classes, that may influence the evaluation of the assessment body in determining the well-known trademark, for the mark has been registered in all classes and thereby covered with all-class protection, then it seems to be of no sense to grant it the title of well-known. So, from this aspect, the all-class registration may be a disadvantage to the trademark.
Despite it only considers the use period, scope, social reputation and record of well-known protection of the trademark, and there’s no explicit regulation that the all-class registration may affect the establishment of well-known trademark, the distinctiveness of the trademark may be diluted by such registration for it may cut the natural connection between the mark and the product or service. Surely, trademark dilution is mainly applied in trademark infringement, but all-class registration may also fade the distinctiveness of the mark, which is obviously running counter to the purpose of the well-known trademark system.
In a word, for foreign companies, the most secured and comprehensive way to protect the trademark is surely the all-class registration with the highlight on the key class, also the similar and related trademarks shall also be applied. Surely, companies shall make a proper arrangement so as not to be regulated by the 3-year cancellation clauses and the denial of the well-known establishment.
Other recommended posts on our website:
1. The Actual Term of Trademark Registration in China
2. How to Apply for the Trademark Record in China Custom
3. How to improve the success rate of trademark registration in China?
4. Matters for Attention in Trademark Refusal Review in China
5. Introduction of China’s Legal System of Trademark Renewal
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