What to do AFTER you get Your China Trademark

We constantly stress the importance of securing trademark registrations in China. See e.g., China: Do Just One Thing. Trademarks. But upon seeing an email from one of our international IP attorneys to a client, it occurred to me that we have not written about what companies should do after they secure their China trademark(s).

So here goes, in the form of the fairly standard email we write to our clients once we have received notification from the China trademark office that the trademark application has been accepted and the trademark has now been registered in China.

We are pleased to report that the following China trademarks have been registered for Class 25 goods (i.e., clothing):

(1)    [Brand name]
(2)    [Brand name] logo

Attached please find a scan of the Certificate of Trademark Registration (along with an English translation) for each of the above-referenced trademarks. Please note the following:

1.    If ______[client] LLC (i) changes its name or address; (ii) licenses any third party to use either trademark; or (iii) assigns either trademark, it must file an application with China’s Trademark Office to that effect.

2.    Each trademark will be valid for a period of 10 years, starting on the official registration date of June 21, 2013, and ending on June 20, 2023. If you wish to renew the trademarks, you may do so any time within six months before the expiration date.

3.    Each trademark will be presumptively valid throughout its term, but if a trademark is not used in commerce in China at least once every three years with respect to the covered goods, then it is at risk of cancellation for non-use.

We are still waiting to receive the original trademark certificates. Based on past experience, we will likely get that in about a month or so and when we do, we will send those to you.

As we noted in our previous email, we should discuss some other ways to protect your intellectual property in China.

Registering your trademarks is the first and most important step, but there are two additional steps we recommend, especially to those who manufacture goods at risk of counterfeiting, like branded clothing. First, monitor China for possible infringement of your marks, including monitoring third party applications for similar trademarks. Second, register your trademark with China Customs. The latter is an essential step if you believe counterfeit product may be coming from China because Chinese Customs will not seize allegedly counterfeit products unless you have a registered trademark in China AND you have separately registered that trademark with Chinese Customs.

Please let me know if you wish to discuss these additional steps with us

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.