China Trademarks: Do You Want it Right or on the Cheap?

I often get emails from people asking what my law firm charges for registering trademarks in China and I always respond by quoting our rate for a trademark analysis and stating that we will not “just” register their trademark in the category they tell us. If they want that, they should retain someone else.

I did that the other day and the person emailed me back to say that our rates were higher than those of a Chinese firm they were putting in competition with us. My response to that was as follows:

If all we did was just file the trademark you tell us to file, we would charge the same. That’s not at all what we do and much of the time we save our clients considerable money in the process. What we do is consult with our clients regarding their product, their business and their intellectual property (IP). After we do that, we then we formulate a trademark protection plan that will maximize protection while minimizing costs. In the last three months alone we have been contacted on the following matters by companies who had used trademark filers who did nothing more than just file the trademark their client told them to file:

1. American company used a quick filer who filed one China trademark for them. Turns out the American company should have filed at least two China trademarks because a Chinese company filed the same trademark for the same product and now there is pretty much nothing the American company can do to stop the Chinese company from using “their” trademark to compete with them. We get about five of these calls a year. You have a clock radio. Do you register the clock or the radio or both? It depends mostly on what you are going to be doing with the clock radio and where you are going to be doing it. Here’s a less obvious example: you trademark your lawnmower but not the engine. Someone else trademarks the engine and puts their name in big letters on the engine and starts selling lawnmowers with it. You should have trademarked the engine and the lawnmower. I can go on and on.

2. Should your trademark be in both English and Mandarin? That really depends again on what you will be doing and where you will be doing it. But if you do not register the Mandarin name, you do not get it. And what about Cantonese? And what will you choose for your Chinese name anyway?

3. Should you register your logo separately or with your name or not at all. Again, that really depends. Many times you can do the name and logo together and thereby save money. Other times you cannot.

4. Are you certain the class you have chosen makes sense in China? Do you know what categories you want within that class?

5. What if your trademark is not accepted by the Trademark office?  What exactly does your fee with the Chinese firm cover? I assume they will come back to you and just say “too bad.”  We work with the trademark office to get them to say yes and if they still do not, then we work with you on what to do and if that involves trying again with a new trademark, we do that too.

In other words, when it comes to registering a trademark in China, as is true of just about everything else, you get what you pay for.

We will be discussing the practical aspects of Chinese law and how it impacts business there. We will be telling you what works and what does not and what you as a businessperson can do to use the law to your advantage. Our aim is to assist businesses already in China or planning to go into China, not to break new ground in legal theory or policy.