British and European Trade Mark Attorney Julia House provides a timely update as to developments relating to Trade Mark protection in China.
It is now possible to protect on-line retail services in China….
There has been an interesting development in Chinese trademark practice. Up until now, it has not been possible to secure protection for a broad scope of retail services. However, as of 1 January 2015 the Chinese Trade Mark Office will accept the description “Provision of an online marketplace for buyers and sellers of goods and services” in Class 35.
Consequently, companies offering online retail services will be afforded a greater degree of trademark protection than previously available in China, by designating this new Class 35 term. It must be noted that this change in practice applies only to “retail and wholesale-retail services” made available online. Consequently, protection for conventional ‘in-store’ retail and wholesale-retail services will continue to be inadmissible in Class 35.
For companies owning existing trademark registrations in China, it would be prudent to give consideration to filing additional trademark applications to incorporate the new scope of service protection if this is relevant to their business activities.
As the paragraph below illustrates, seeking to ensure that adequate trademark protection is in place in China remains of vital importance.
The nightmare of trademark squatting remains a problem in China ….
With the increase in the volume of Chinese trademark Applications in recent years, it is important that applicants are aware of one of the most common forms of trademark abuse in China, namely ‘Trademark Squatting’.
‘Trademark Squatting’ is essentially the act of filing an application for a foreign-originating trademark without a genuine intention to use it in China. This is done in anticipation of the owners of the original trademark being willing to pay a hefty price to recover the ownership in China. The practice catches many foreign applicants by surprise as they often only become aware that their trademark has been squatted upon applying for a trademark in China and being faced with a fatal citation during the examination process. The most commonly affected Marks are those that have established a reputation in a specific industry, but fail to reach the Chinese standard of being a ‘well known’ trademark.
Difficulties are encountered when attempting to regain rights to the ‘squatted’ trademark through legal channels by invoking the invalidity procedure. In order to prove that the foreign trademark has acquired distinctiveness throughout China, detailed evidence of use must be supplied. It is preferable to avoid this difficult and costly challenge by adhering to the steps set out below:
1. If it is likely that you will want access to the Chinese market in the foreseeable future, consider applying to register a trademark in China before you have built up a significant reputation in the industry.
2. When filing for a trademark in China, ideally also file for the Mandarin equivalent so as to preclude third parties from achieving this first.
3. Before dealing with Chinese partners, ensure that a contract is drawn up which stipulates the ownership rights over the trademark and keep the documents safe so that they can be referred to and relied upon in the future.
4. It is worth seeking copyright protection as an additional means of protecting your rights in a trademark in China, and to do so, you should be able to evidence the date at which your copyright arose.
If you would like to receive more focused advice in relation to trademark use and protection in China, please contact the team and Albright IP and let us help you.
The experienced team at Albright IP Limited will be able to offer advice in all areas of trademark law and practice, including protection beyond the UK and Europe.